Beer society fails to prove that ‘radler’ is descriptive for beer

New Zealand
In DB Breweries Limited v Society of Beer Advocates Inc ([2011] NZIPOTM 19, July 13 2011), DB Breweries Limited, one of New Zealand’s largest brewers, has been able to maintain its registration for RADLER, despite an invalidity attack by a beer society. 

DB owns a trademark registration for RADLER for beer. Earlier this year the Intellectual Property Office of New Zealand had issued a decision declining an application for revocation for non-use by the Society of Beer Advocates (SOBA). SOBA argued that DB’s use was not use as a trademark because 'radler' is a descriptive term for a type of beer. The application was thus refused.
Both parties filed extensive evidence. DB submitted a survey which the assistant commissioner of trademarks ruled demonstrated that RADLER had no other meaning at the application date of 2003, other than DB’s Radler product.
SOBA produced evidence from around 40 members of the public attesting to their knowledge of the term 'radler'. SOBA submitted that the witnesses attested to a personal knowledge of 'radler' as a descriptive term. That knowledge was said to come from:

  • encountering radler beer on travels to Europe and North America;
  • migrants who had moved to New Zealand;
  • reading books and articles about beer;
  • collecting beer cans; and
  • talking to people who know about radler beer. 
SOBA submitted that there would be many others in New Zealand who would have understood the term 'radler' as being a descriptive term in relation to beer.
The evidence was criticised for being in the form of pro forma declarations. The assistant commissioner held that there was a distinction between the term 'radler' being used by the public as a generic term and an awareness by a limited number of New Zealanders that the RADLER mark was used outside of New Zealand. 
The assistant commissioner ruled that, to the extent that the term 'radler' indicated anything, it was that it was a term known outside New Zealand. The assistant commissioner did not address whether the source of the knowledge was relevant - namely, whether it mattered how people in New Zealand came to know of the term, provided that they were aware of the term at the application date. This is commonly known as 'spillover' or 'slopover', and is commonly used to show that a trademark has a reputation in New Zealand, despite the product or service not being available.
The assistant commissioner further ruled that SOBA had failed to establish that RADLER had any meaning, other than DB’s Radler product, at the application date.
SOBA also claimed that the registration should be revoked because, due to acts or inactivity of the owner, the trademark had become a common name in general public use.
In relation to becoming a common name, the assistant commissioner said that SOBA had to show substantial, cogent and objective evidence that the term 'radler' had become a common name used to denote a particular type, kind or characteristic of beer, and the change in distinctive character was as a consequence of the acts or inactivity of DB. The assistant commissioner found SOBA’s evidence wanting in that there was no direct evidence of the relevant state of mind of consumers occurring as a result of DB’s acts or inactivity.
SOBA’s final claim was that use of RADLER by DB was likely to confuse or deceive on the basis that consumers would expect the product to be a low alcohol beer. The assistant commissioner held that SOBA had not proved that the term 'radler' was associated with low alcohol beer and, therefore, use on full alcohol beer, as DB’s RADLER product is, would not be likely to confuse or deceive.
Both the revocation and the invalidity actions thus failed and the RADLER registration remains. SOBA has recourse to an appeal to the High Court.
Kate Duckworth, Baldwins Intellectual Property, Wellington

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