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The Commissioner of Trade Marks' decision, released earlier
today, not to cancel DB Breweries' trade mark registration for
'radler' is a sad day for common sense, says one of New
Zealand's top patent and trade mark attorneys.
Ceri Wells, a founding partner in James & Wells Intellectual
Property, took on the case for free on behalf of the Society of
Beer Advocates (SOBA), because in his view
DB's registration of what is a descriptive word for a style of
beer amounted to an abuse of the trade mark registration
system.
"Now New Zealand is the only country in the world where
only one company can market radlers and the public is not able to
buy and enjoy a genuine imported radler. I was happy to work on
this for nothing, because I think the 'radler' trade mark
is morally and commercially repugnant."
James & Wells based SOBA's legal case on the history of
radler beers, which the Society says originated in Germany about 90
years ago when thirsty cyclists ("radlers" in German) and
hikers were served a quenching mix of lager, soda and citrus
juice.
The popularity of the drink spread throughout Western Europe,
the UK and into North America as a low alcohol option, and latterly
it arrived in Australasia where the style has been interpreted as a
full strength beer flavoured with citrus.
Several different brands of radler were sold in New Zealand,
until DB successfully registered 'radler' as a trade mark -
which means that in New Zealand, only DB can use the word
'radler' to describe a radler drink. This has not been
allowed in other countries.
"This was a clear attempt by a dominant market player
to impede competition from others wanting to produce or market a
radler-style beer.
"Using its trade mark, DB was able to stop
Dunedin's Green Man Brewery from marketing an authentic
low-alcohol radler, and stop supermarkets stocking imported
radler-style beers," says Ceri Wells.
To get the Commissioner to cancel DB's registration for
Radler, SOBA had to prove one of several grounds, including whether
a significant number of New Zealanders recognised radler as the
name of a beer style, or that other brewers were likely to want to
use the radler name in relation to their own beverages, when DB
registered the word. Alternatively, SOBA had to prove that the word
radler had become a common term in general usage due to DB's
product and its marketing.
Despite numerous testimonies from SOBA's witnesses, clear
evidence of other brewers and retailers wanting to legitimately use
and actually using the radler name in relation to beer in New
Zealand after the date of DB's registration, and a survey that
showed more people recognised radler as the name of a style than as
a brand, the Commissioner of Trade Marks found that this was not
enough to show that radler was a generic term.
"Allowing DB's registration to stand is a defeat
for common sense, because it is akin to only one beer manufacturer
being able to market pilsners or lagers," says Ceri
Wells.
"The decision illustrates how difficult it is under New
Zealand law to cancel a trade mark registration for a descriptive
term which should be free for all to use."
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
James and Wells is the 2010 New Zealand Law Awards winner of
the Intellectual Property Law Award for excellence in client
service.
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