A major part of growing a brewery is developing a strong brand, and once that brand is decided, it is important to protect it.
Here, James Omond, specialist IP and commercial lawyer with Omond & Co. provides tips for new breweries looking to trademark their brands, or existing breweries wishing to trademark a product name.
The benefits of trademarking are both defensive and proactive, according to Omond.
“Trademarking has two benefits. It’s both the sword and the shield in that it can be used to stop other people from using a name similar to yours, and as a shield in that it provides a defence to someone else saying you’re infringing their trade mark,” he explained.
Deciding on a name
The first issue is, of course, coming up with a name, whether it be for a product or a company brand.
Guidelines for choosing a brand name:
- Use an invented word
- Avoid locations and family names
- Avoid descriptive names relating to the product
Even a portmanteau can fall foul of the Trade Mark Office.
“If you have a blend of two descriptive words, the fact that you have joined them together as one word won’t make any difference to the TM Office,” he explained.
Even choosing a name which includes ingredients or is associated with the production process of beer can be problematic.
“These are issues we’ve seen with companies like Malt Shed. They ended up changing their name and there were two reasons for that,” explained Omond.
“The Trade Mark Office might reject it because it’s descriptive of the product or ingredients of the product, so other producers should be able to use it is their reasoning. Secondly someone else might have already chosen the same name.”
The key with choosing a name, for a product or brand then, is originality.
‘[This is why you should] avoid the use of the name of the person or the location. For example whenever anyone tries to register anything with the name ‘Jameson’ in class 32 or 33, it pops up on a trade mark watch for Jameson Irish Whisky, owned by the global spirits giant Pernod Ricard, and they look at whether they should oppose it.“
Relatively common names like this, or similar versions, can be already in use, and this will diminish the protection you have should someone else want to use the name.
“Also, if they decide to use the name because there was a famous person, an explorer in the area you’re in for example, or the first person to brew in your area 150 years ago or something like that, leaving aside if you’re using someone else’s history and it may not be genuine for your brand, from a trademark perspective it leaves you open to difficulties.”
Even having your brand in a different language doesn’t necessarily protect it.
“If it’s a language that the Trade Mark Office considers is well known, including French and Italian based on previous cases, and the word is descriptive, it will be treated the same as the English version. If it was Mongolian for example you might get away with it.”
The trademarking process
So you’ve decided on a brand or product name, but what is the process from there?
Once you understand the goods and services classes and what your trade mark should be registered as, you can submit an application. But even if you have a registered business or company name already, it won’t be enough to secure a trade mark.
“A lot of people think that if they apply to register it as a business or company name, it will be protected. But ASIC actually allows anyone to register almost anything. This does not give you an ownership right,” Omond explained.
“That’s the biggest mistake people usually make. It’s the same with domain names. They give you zero intellectual proprietary rights. It’s only a trade mark that you own that gives you proprietry rights to the name.”
The next step is checking to see if the name you had in mind is already taken, because when starting out you may have several different names to choose from.
“My advice is when you try to come up with a name, narrow it down to your favourite one or two before involving trade mark professionals. Narrow it down by doing a basic search on the IP Australia site first. Once you’ve done searching yourself, then you might want to go to an expert. But if you give a TM attorney a long list of potential names, it will cost you a fortune for them to search and advise on the availability of all of them.”
Although the Australian Trade Marks Register (ATMOSS) is available online so anyone can carry out searches, a simple search may not uncover similar matches which could cause conflict during your trademarking process – which is why Omond suggests you should use a professional to carry out a search before finalising your choice.
Another option is to use the Trade Mark Headstart Service, Omond suggested, whereby a trade mark examiner will assess your request, carry out a search of the Register and contact you (usually within five working days) with a report. From there, the request can be converted into an application, or you can make amendments, or decide not to continue with the process and go back to the drawing board.
In terms of the form in which you should register your brand, one thing to think about is attempting to get a plain word mark, rather than a name and a logo. If the name is sufficiently distinctive (and registrable), then including the logo as part of the registration will only ‘dilute’ the strength of the protection you get from your trade mark.
Omond says you should only go down this route if the plain word version of your brand will not be registrable by itself, such as A Local Beer did previously. Now rebranded to Local Brewing Co. the company is seeking another trade mark – still a combined logo and name, because the words themselves are too descriptive of the business to be registrable by themselves.
This combination is more likely to be accepted due to its complexity, however, it provides less protection in the event that someone else uses a similar trade mark, because the infringing use would have to be similar to both the graphics and the name to be considered an infringement, rather than just the wording, or because they may be using the words in their normal descriptive fashion, not as a trade mark.
“The reason you would do this is to draw attention away from any issue in the wording by adding additional distinctive material. This will allow you to get a trade mark registration, but the problem is in terms of enforcing it. If someone’s mark looks like yours, it may need to have similar wording, or if it has similar wording you might need to show the other elements, like the logo, are also similar.
“The best thing you can do is get a plain word mark, because that gives the strongest protection, then do a second one for the logo by itself as well,” explained Omond.
“But for people with budgetary constraints, there may be too much appeal in applying for them together in a single application, to save money.”
Opposing a trademark
One of the worst-case scenarios is if you find your trade mark being opposed. It happened to craft beer gift boxes and subscription service The Beer Drop earlier this year after Coles opposed its trade mark.
There is a two-month advertising period following the acceptance of a trade mark, during which time the opponent files a notice of their intent to oppose.
Within a month, they must file their ‘Statement of Grounds and Particulars’, noting that this stage does not yet include evidence. The trade mark applicant must then file a notice to defend the trade mark, or allow it to lapse.
Both sides are then required to provide evidence in turn, before it is allocated to a Hearing Officer. Either party can then either wait until the officer makes a decision in the hopes that it goes in their favour, file written submissions drawing attention to their legal arguments, or request a formal hearing to present their case.
It currently takes more than 6 months for a hearing to be listed, so overall this process generally takes 18 months to two years, explained Omond, highlighting the importance of choosing the right trade mark for your business from the start.
Check the Brews News Trade Mark Acceptances and Applications to see monthly updates on what beer trade marks are being applied for.
Find out more about the trademarking process on the IP Australia website.