Wednesday, 5 March 2014

Trade Marks and microbrewers

Been a while since I've blogged but I've been moved to words by the latest Trademark dispute, this one between Everards and Elixir Brew Co.

It's an area in which I have a little experience and I can tell you it's never fun. Great Heck Brewing Co owns no registered trademarks at all but we have been asked by a trademark owner to stop using a beer name and we complied. We have also filed a registration and then abandoned it.

I'm not going to go into detail about the time we had to re-name a beer to avoid legal action from a TM holder because that wouldn't be fair on the TM holder. They acted entirely within their rights and I won't name them let alone criticise them. With regard to that case, and without mentioning names, I will criticise aspects of the registration system which it brought to light.

When a TM registration application is registered the registration office (I forget what it's called) first does a preliminary search to see if the trademark is already registered then advises the applicant on what the results are. If the applicant goes ahead with the registration it is then published in a journal for review mainly by IP companies acting on behalf of TM owners to see if any registered TM owners object.

One rule of TMs is that you aren't allowed to register a name which simply describes the product. In our case the name we were using arguably shouldn't have been allowed to be registered in the first place because of this rule however when it was registered nobody objected because although it was mainly descriptive it wasn't similar to an existing TM, so the people who police new registrations, existing TM holders, didn't care and nobody objected.

From that point on it was irrelevant whether or not the mark should have been registered. Once it is registered it's registered and arguments about overturning the registration would be ridiculously costly and pretty much futile. This struck me as unjust and a fault with the system. It is not a fault with the TM holder in question. They didn't do anything wrong.

Our other encounter with the system was more similar to that experienced by Elixir. I applied to register the beer name Dave. The TV company has registrations for it in just about every category except beer so I thought we'd be OK. The advice after searching however was that it was likely to be objected to by a posh off licence chain in London who own the name Davy's. Arguments about different sectors and lack of potential for confusion are irrelevant here. Off licences and brewers are in the same category of TM and the names are similar so we were advised we would be very likely to receive not only an objection but also a cease and desist from Davy's - probably the reason why the TV company didn't have a registration in that category - so we killed the application before it went forward for review. And we still market a beer called Dave. 

I'm very pleased that Everards have joined the long list of TM holders who have withdrawn their cease and desist actions in these circumstances. My assumption is that this will have been issued almost automatically as part of a standard IP protection system and it's good and to be expected and applauded that management have had the nouse to overrule it in this case. Well done Everards and congratulations to Elixir.

One question is raised by this though, and it applies to all the recent public TM scandals involving big boys and little boys with the exception of the Wierd Beard / Camden spat which was entirely different. 

Redwell, Tickety Brew and Elixir were all trying to register  a trademark similar or identical to an existing registered trademark in the same category. They were all eventually allowed to continue using the mark, thank God, (I doubt whether their registration applications will have been successful though) by the TM owners but I wonder why, given my experience outlined above and assuming they were as careful and as well advised as I was, did they pursue their own registrations in the first place? 

Many commentators in social media (Probably not the brewers themselves I hasten to add) say things like, "How can <big brand> trade mark such a commonly used word/phrase as, <Trade Mark in Question?>" 

The answer to that may lie with the small brewers themselves. They were after all trying to gain registered TM protection for exactly the words in question for their own benefit. 

So what can a micro brewer learn from these cases? What I take away from it is that we need to consider extremely carefully why we want to register the TM. What are we hoping to get out of it? The Camden / Wierd beard case shows us that even if a small brewer is successful in registering a TM, if they ever use that registration against a competitor it's a social media PR nightmare.

My advice, and I guess the guys from Redwell, Tickettybrew and Elixir might well agree with me, is be very careful before finalising a trademark registration application. Sooner or later someone is going to come a cropper with it. 

Remember you can always monitor other people's new applications and object on grounds of prior use if someone else tries to register your unregistered mark.

Even if your mark is not confusable with another and you are successful in registering it, would you actually enforce it against a newer, smaller brewer and a barrage of outrage in social media?

My conclusion is that the system is bloody awful, unjust and unfair and I want as little to do with it as possible.