HYPOCRISY or JUST PLAIN STUPID?

You be the judge.

The recent decision in New Zealand of the Assistant Commissioner of Trade Marks in the Radler beer case has clearly split into two camps:

-       Dominion Breweries (DB), who registered the RADLER trade mark in New Zealand for beer, and then sought to enforce it against unauthorised third parties using the name radler on imported beer

-       SOBA (Society of Beer Advocates) and their supporters

There has been an outcry in the press that as radler was the generic name for a type of beer commonly consumed in Europe, it should not have been registered.

SOBA had its day in court and lost because it was unable to show that in 2003, when DB applied to register RADLER as a trade mark, the radler name was used generically in New Zealand, and that in the intervening period until the hearing at the Intellectual Property Office, they could not prove that New Zealanders did not exclusively associate the name radler with the particular style of beer marketed under the Monteiths RADLER  brand.

Had SOBA been able to provide the type of evidence required to prevail in such a scenario, they would have succeeded in cancelling DB’s RADLER trade mark registration – they could not do so and, therefore, failed.

Which brings me to the comments in an article in the New Zealand Herald today by “intellectual property consultant Theodore Doucas,” where he says:

“The decision in favour of DB Breweries – on the grounds radler was not known as a descriptive term in New Zealand in 2004 – was out of touch with reality.”

He goes on to say:

“…..radler was a generic term for a style of low-alcohol beer, such as ‘lager’ or ‘pilsener’.”

His final quotes are:

“You cannot give somebody a monopoly like this and then think it’s good for business.”

“This is bad for New Zealand, bad for business and bad for the consumer because it stifles competition.”

I refer to my heading above, and invite you to consider the following facts:

Theodore Doucas started up his trade mark consultancy business in November 2007.

Prior to setting up in private practice as a trade mark lawyer, Mr Doucas was, between April 2001 and December 2007, Manager of Trade Marks, and then Assistant Commissioner of Patents, Trade Marks and Designs at the Intellectual Property Office of New Zealand (IPONZ).

DB applied to register RADLER as a trade mark on 2 September 2003.

The RADLER mark was eventually registered on 8 June 2004.

The reason it took nine months to achieve registration was that the RADLER trade mark application was initially objected to by the IPONZ examining staff on the grounds it was not distinctive (it was the name for a European style of beer).

Submissions were filed by the lawyers acting for DB.  Eventually, Mr Doucas, in his role as Assistant Commissioner, accepted the application and then in June 2004 signed-off its registration.

Clearly, Mr Doucas was in charge of operations in the trade marks section of IPONZ at the time, and yet he now comes out strongly saying that the name was generic; the decision was out of touch with reality; and that giving people a monopoly in such a term is bad for business.

Sorry, Mr Doucas, you can’t have it both ways.

New Zealand: the RADLER decision – no use crying in your beer!

There has been a lot of discussion following the decision of the Assistant Commissioner of Trade marks at the Intellectual Property Office of New Zealand in the recent case where the Society Of Beer Advocates, Inc (SOBA) applied to revoke Dominion Breweries’ (DB) trademark registration for RADLER.

So why has this come about?

Back in September 2003, DB applied to register RADLER for beer.  In June 2004, they were granted registration of the name as a trademark.  The application to register the mark had gone through the examination and publication stages to registration without objection from any third party.

With all trademark applications, once they are accepted, there follows publication by way of advertisement in the Patent Office Journal, during which there is a three month opposition period.  This enables any interested party to oppose the registration of the trademark in question.

The importance of objecting at the opposition phase of the process will become abundantly clear as we go on to discuss this situation.

SOBA was only incorporated in 2006, and was therefore never in a position to object to the RADLER trademark application when it was advertised for opposition purposes. It only came into the picture subsequently, when one of its members sought to market the European Radler-style beer.  This was objected to by DB as being an infringement of their registered trademark for RADLER.  SOBA then became involved and brought the revocation proceedings on behalf of its membership.

Following the expiry of the three month opposition period, and given there was no formal opposition lodged inside the deadline, the mark was registered.

A trademark registration confers on the owner the exclusive right to use that name, and to enforce the registration against any unauthorised third party from using the same or similar mark on the same or similar goods or services for which that mark is registered.

This statutory exclusivity can then only be attacked on specific grounds, and the onus is on the party applying to attack the registration to show it should not have been registered in the first place.  So, SOBA had to show that the mark was descriptive or generic at the time of registration, and should not have been registered.  They also had to show that the New Zealand public did not associate the term RADLER exclusively with DB.

Going back to my earlier point, had any interested party attacked the trademark application during the available opposition period, the onus would have been on DB to show that the mark was distinctive at the time of filing, and not descriptive of a lemonade shandy beverage commonly consumed in Europe.  It’s a moot point as to whether they could have discharged this onus.

So SOBA had to make all the running in this case to show the trademark RADLER at the time it was filed back in 2003, was a generic term in New Zealand, and further that it had not acquired any distinctiveness through use by DB from 2003 to the time the action was brought to revoke the trademark registration.

This proved a bridge too far for SOBA who failed to show in evidence that RADLER  was a generic term in New Zealand back in September 2003 when the application was filed, and that it had not acquired a distinctive character through use by DB in New Zealand since that date.

SOBA would have to have established that a significant percentage of the New Zealand public associated the name RADLER with the lemonade shandy beverage commonly consumed in Europe.

The implication is that SOBA was unable to satisfy the burden of proof on it to show that RADLER had a generic meaning to New Zealanders back in 2003, and since that date, most New Zealanders did not exclusively associate the name RADLER with the particular style of beer marketed under the Monteiths RADLER brand.

This is not the same scenario as stated by an obviously disappointed Greig McGill, secretary of SOBA, when he referred to this decision meaning that anybody could register “muesli” for cereal, or “jalapeno” for hot sauce.

These terms are well-known in New Zealand, whereas, back in 2003, RADLER was not a term widely known to describe a particular style of beer consumed in Europe, by a significant number of New Zealanders.

Of course, had SOBA been able to show conclusively that RADLER had the meaning attributed to it in Europe back in 2003 when DB applied to register the name as a trademark, then they would have prevailed, and the trademark registration would have been struck off.

So, it’s fine being disappointed and bitter about the decision, but this case could hardly have gone SOBA’s way where, by no fault of their own, the trademark application for RADLER was not objected to at the opposition stage of the process, and that they subsequently failed to discharge the onus to prove the mark was generic in New Zealand back in 2003, and that in the intervening period it had not become distinctive of DB’s product.

Conclusions

1.     It is important for industry sectors, and individual companies, to carry out regular watching searches of the register of trademarks to ensure that certain trademarks which could give a competitor an unfair advantage in the marketplace are objected to at the opposition stage of the registration process.  These types of searches are regularly tailored for interested parties by intellectual property specialists.

2.     It is always best to object to a trademark during the opposition period, rather than have to make all the running later in attacking a registration on the basis it should never have been registered in the first place.

3.     For all parties who wish to run with a name that could be descriptive or generic in another jurisdiction, it’s important to be aware that they could find themselves in the position where they need to defend opposition proceedings to achieve registration, and in the worst-case scenario, they could lose the exclusivity to use that name as a trademark.