Choosing a name for a new brewery is key but it can be a minefield, as Earth Beer Co. and Good land Brewing Co. found out this recently.
Both breweries have had to change their trading names this year due to trademark and IP clashes, highlighting the importance of protecting your brand as discussed by IP and commercial lawyer James Omond of Omond & Co.
Ritchie Foreman is the co-owner of Earth Beer Co. located in the Northern Rivers region of New South Wales, which was known as Red Earth Brewery when it launched last year.
Using the term ‘red earth’ in Australian company names is relatively common and there is another alcohol manufacturer in Dubbo with the same name. But it was not until this year that the team realised that it would cause an issue, especially if they were planning on further expanding distribution.
“The name issue, our business partners knew about it at the time and we’ve bought them out since, but they were thinking it wouldn’t be an issue because the businesses were so far away from each other,” Foreman explained.
“And they didn’t think distribution was going to be a big deal.”
However, following COVID and planning issues with its tasting room, Earth Beer Co. realised that the way forward for the business would be local distribution, which put the focus back on branding.
“We knew about [the name issue], but we were so attached to the name and it resonated with the local community so much that we downplayed it,” Foreman said.
“The Red Earth that was in Dubbo, they export only to China, but now they’ve opened a little tasting room out there, and if we start distributing nationally in the next 10 years, changing our name down the line could be costly,” Foreman explained.
The team wanted to keep the Red Earth name so much they even went down to Dubbo to see if they could work out a deal with the other company.
“We basically did a cost-benefit analysis of how much it would be to change everything, the signage and branding and the time it would take us. We came up with about $9,000, which we could offer to take the name.
“We tried contacting them, but there was a lot going on. They exported mainly to China, the owner was based there, and we had to have letters translated into Chinese, so trying to get a legal document to them was mayhem. But you see a Red Earth wine and a beer and you could see how people would get confused.
“We even drove out there to speak to them but it wasn’t going to happen. We wanted to keep it really bad, but once we put that figure out there and it was rejected, we knew we’d have to change it.”
So the team went back to the drawing board.
“We made sure that Earth Beer Co. was available, and there were no issues with that in the beer [category].”
Good Land Brewing Co.
Further South in Victoria, Jimmy Krekelberg at Good Land Brewing Co. was forced to change the name of his brewery, which is still in planning, a number of times.
“Originally I was going to call it One Brewing, I thought this was the way to go with no idea about trademarks.
“Then you hear stories when you start looking into it. First I heard about it was Kaiju, when they were called Monster Mash.”
Kaiju was forced to change its name after a clash with Monster Energy Drink in 2014, whilst more recently, Endeavour Brewing , after being paid $5 million for the use of its IP by Endeavour Drinks Group, part of Woolworths, felt the sting of rebranding to a poorly researched name. The Sydney brewery was forced to write off $64,000 it had spent on a new brand before realising it conflicted with an existing trademark.
“As I started looking into it more and more and learning about the classes, I realised that wouldn’t work at all, so we switched to another name, Festival Brewing. We started heading in that direction, we registered the company, got bank accounts, and got all the documents submitted,” Krekelberg explained.
“We put the trademark application in for Festival Brewing, but eight or nine months later we got an email back from IP, with an adverse report back because there was a similar brand in the wine class.
“They got in contact with me and said we can’t let you go through with Festival unless you go see a lawyer and maybe there are a few other options, but at the moment the way it sits.”
Then Krekelburg decided on Lokaal Beeer.
“With Lokaal we went through the Headstart process, I’m not an IP professional, and we were trying to save a buck as well. But about 12 months later in my Facebook feed, this Local Beer Company pops up.”
While permissible under trademark rules, there were branding and market issues to consider.
“Their branding was starting to become, not the same but similar to the concepts we came up with.
“That was when I reached out to Brews News Week, our family, friends, smaller brewery owners and some publicans, because aside from the fact I just spent a shitload on merchandise, our website, packaging, we hadn’t actually released the brand into the market yet.
“[James Omond] came back and said look, for all intents and purposes you own it, you can trade on that, but it didn’t feel right anymore.
“We never brewed in Australia before and didn’t want to start a feud or anything. But I’d gotten really attached to it. I really liked the direction it was going in, but at the end of the day, but do we launch it and in four years when my beers are on the shelf next to theirs, risk customers get confused?
“Hence Good Land. We went with that, and changed everything.”
How to avoid it
Andrew Sutton, associate at WA law firm Lavan, said that he frequently saw issues like this with clients.
“We’ve had clients go through rebranding rather than have a fight about it, but neither option is ideal,” he said.
“When you’re coming up with a brand, even in the concepting stage, the earlier you start looking at whether there are conflicts out there the better.”
As well as searching the IP Australia Trademark registers, there are other avenues to explore, Sutton said.
“You should also be looking at domain names and if they are taken, what that means, and what social media pages are available. Are they available on Facebook, Instagram and Twitter?”
While not every brewery has the budget to bring in a creative agency in the planning or even rebranding stages, it is also worth keeping the issue of IP in mind.
“A business might engage a creative marketing agency to come up with it, and they might not be interested in trade issues, they get into the creative flow, spend thousands at a creative agency, then there’s a problem.
“If you’re going down the route of having a creative agency to come up with the brand, you should question if they are coming up with it from a trademark perspective. Creatives like that aren’t lawyers and might not want to take that liability on, they might bring someone in at your cost or you could do it yourself but that could really save you in the future.”
Indeed cost is a major issue to breweries, and many smaller or new breweries would baulk at the cost of using online trademark platforms or bringing in lawyers to cover their trademarking.
However both brewers advised others to take advantage of IP Australia and its Headstart service.
“To do this we remortgaged houses and sold our shit, you probably don’t think you’ll get that big but you never know how big you will get, Imagine Stone & Wood having to change their name now?
“But doing Headstart and getting that done straight away is a good idea, most of these breweries don’t come from a lot of money.”
Jimmy Krekelberg of Good Land Brewing Co. also said to expand knowledge of IP Australia classes, and whether or not to trademark a logo or the words you want to use in your company name.
“Get your head around the IP website, use the advanced search tool, you can search individual words, images, individual classes, and use the Headstart programme.
“It’s a hard thing, you’d like to from the start just go in and do it because a brewery is so money-intensive you have to cut your budget in certain places. And if you’re not established the brand isn’t worth anything, but brand is a heavy equity thing to own when you are established.”
Find out more about trademarking, IP Australia’s Headstart service and choosing the best name for your brewery on BreweryPro.
To make it easier for Australian brewers to protect their IP, Brews News also monitors Trade Mark applications each month on BreweryPro.