Victoria’s Malt Shed Brewery will no longer operate under that name following the settlement of a trademark dispute with Lion-owned Malt Shovel Brewery.
The Wangaratta brewery yesterday posted on social media announcing that it was removing ‘brewery’ from its name.
“Despite IP Australia accepting our trademark, logo and name in September 2017… the difficult decision not to proceed any further down the lengthy legal process meant the below happened last week,” Malt Shed posted to its Facebook page.
Lion registered the Malt Shovel Brewery name on February 17, 2005.
Malt Shed first applied to trademark its name on April 13, 2017, with its application accepted in June 2017. Lion opposed the application on November 6.
An Australian Trade Mark Search shows that Malt Shed Brewery Pty Ltd originally applied to register the words ‘Malt Shed Brewery’, the words ‘Malt Shed’ with image description ‘pentagon, striped is house, stylised’ and the words ‘Adventures in Malt’ in April 2017.
The two applications for Malt Shed with the logo and Malt Shed Brewery were both opposed by Lion’s Malt Shovel Brewery Pty Ltd.
Both cases were settled in October last year when Lion withdrew both of its opposing applications and Malt Shed Brewery withdrew its application for the words Malt Shed Brewery. The words Malt Shed along with the logo were allowed to proceed to registration.
As part of the agreement, Malt Shed was granted a transition period in which to phase out brewery from its name.
Malt Shed co-founder Grant Jones said that he was proud to have managed to keep the Malt Shed name.
Jones told Brews News that the brewery had a strong case in retaining its Malt Shed name.
“Malt Shed is really what we are about – we’re a malt-focused brewery with a shed,” he explained.
“We went on a bit of a journey to protect that because we felt it was part of our story, part of our brand and it doesn’t take away – from our point of view – that we’re still a brewery and we produce good beer.
“But we don’t have endless pockets, we’re a small independent brewery in Wangaratta and we certainly can’t go on that endless journey.”
Jones said that the goal was always to retain the Malt Shed name, and said that he’s happy that that’s where things have ended up.
Trademark attorney James Omond said that this particular IP dispute puzzled him.
“It may be that Lion thought these guys would roll over quite quickly and they didn’t,” he explained.
Omond told Brews News that it’s very difficult to claim monopoly rights on purely descriptive words like brewery or any one of beer’s four ingredients, including malt.
“The issue with Lion and Malt Shovel is that [malt] is an ingredient, so it’s very descriptive of the product,” he said.
“I guess in [Lion’s] favour in this particular case, they’re both two words, they both start with malt and then also the second word in both also starts with the same two letters sh. Plus a lot of their trademark registrations include the word Brewery or Brewers after Malt SHovel.
“You can understand them taking exception to it.”
What Omond said he struggles to reconcile is why Lion decided to settle.
“Having started out on this process, to then turn around and settle and still let the other side use Malt Sh-something, it just seems that they may not have had the courage of their convictions,” he explained.
Omond believes that Lion may have been concerned about losing the dispute or the company’s standing in the beer community.
“They may have been worried that if they did fight all the way, either they might get an adverse result – opening the door for others to use the word malt in their brewery names – or they might have thought ‘if we kept going and if we drive these people broke, it’s not a great look for us from a commercial perspective’,” he said.
This dispute follows a similar case between Lion and the then Malt Brewing Co.
Brisbane-based Malt Brewing Co rebranded to Revel Brewing Co in March last year following approaches by Lion.
The Bulimba brewery’s co-founder Jay Neven said at the time that it was a blessing in disguise.
“We learned through this process that we didn’t have a brand that was strong enough to distinguish us in the marketplace,” Neven said.
Lion has been approached for comment but declined to say anything further than that an agreement was reached between the two parties of which the details are confidential.