Urban Alley is a beer brewer who registered a Trade Mark for URBAN ALE. Another beer brewer, La Sirène, later commenced use of the URBAN PALE trade mark. Urban Alley initiated infringement proceedings against La Sirène for contravention of section 120 of the Trade Marks Act 1995 (Cth).3 In their counterclaim, La Sirène sought orders to cancel Urban Alley’s trade mark under section 88(1)(a) of the Trade Marks Act 1995 (Cth)4 on the basis that URBAN ALE did not distinguish Urban Alley’s goods from those of other traders. The Federal Court considered whether the ordinary use of the words URBAN and ALE were in connection to beer, and whether the trade mark URBAN ALE was capable of being distinguished from the craft beer the company sold.
La Sirène were successful in cancelling the trade mark registration of Urban Alley, and it followed that Urban Alley’s infringement claim was dismissed. In particular, the URBAN ALE Trade Mark was considered to be deceptively similar to the previously filed trade mark URBAN BREWING COMPANY which also existed on the Register. Accordingly, Urban Alley failed to persuade the Court that URBAN ALE was not deceptively similar to URBAN BREWING COMPANY within the meaning of section 44 of the Trade Marks Act 1995 (Cth)5, or that URBAN ALE was capable of distinguished their goods from other traders or producers in accordance with section 41 of the Trade Marks Act.6
Of note in this decision is that the Federal Court accepted expert opinion by Mr Matthew Kirkegaard7 that ‘the word “urban”…is a very generic term used to describe the location of a brewery or its target audience.’ 8
La Sirène appealed the decision to the Full Court 9, and on appeal, their Honours confirmed that URBAN ALE is not capable of distinguishing and hence should be cancelled in accordance with section 88(1)(a) of the Trade Marks Act 1995 (Cth). This decision highlights the importance of ensuring that a trade mark is capable of distinguished goods and services from those of other traders, and further, that even registered trade marks remain vulnerable to cancellation on the basis that they use descriptive words.
_____________________________________________________________
3 Ibid s 120.
4 Ibid s 88(1)(a).
5Ibid s 44.
6Ibid s 41.
7Urban Alley Brewery Pty Ltd (n 7) 14; Mr Kirkegaard is described as a ‘freelance beer writer, commentator, educator and consultant focussed on the craft beer industry.’
8 Ibid 139.
9 Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCAFC 186.
