Asia IP

Are wine and beer the same thing? Australia’s Full Federal Court has ruled in the recent decision of E & J Gallo Winery v. Lion Nathan that the conduct of Lion Nathan in selling in the Australian market a specialty beer under the trademark Barefoot Radler constituted infringement of an Australian registered trademark Barefoot in class 33 for “wines,” according to Megan Ryder, a senior associate at Madderns Patent & Trade Mark Attorneys in Adelaide.

Ryder, writing in the firm’s IP News newsletter, says the determination “was based on a conclusion that Lion Nathan’s radler beer constitutes ‘goods of the same description’ as wine” for the purpose of the infringement provisions of the Trade Marks Act 1995.

“However, there appears to be some debate as to whether this Full Federal Court decision is authority for the wider proposition that beer and wine are ‘goods of the same description,’ with some commentators suggesting that the decision is limited to the particular facts of the case,” said Ryder. “In determining that Lion Nathan’s radler beer constitutes goods of the same description as wine, the Full Federal Court placed weight on the fact that Lion Nathan’s radler beer (which incorporates lemon flavouring to overcome the bitter taste often associated with beer) was intended to be an appealing alternative to wine and that Lion Nathan deliberately developed the radler beer with the objective of enticing consumers who previously drank wine rather than beer.”

Ryder says the extent (if any) to which this decision will be viewed as authority for the wider proposition that beer and wine are goods of the same description “is therefore yet to be seen.”

IP Australia Makes Moves to Streamline Opposition Process

Trademark owners expect a system for protecting trademarks which is more efficient and cost-effective than relying on the common law for establishing and enforcing rights, says Joanne Martin, a trademark partner with FB Rice & Co in Sydney.

“These expectations are not always met by the current pre-grant opposition procedures, and so IP Australia is planning to streamline the opposition process,” she says. “In particular, it has been recognised that for opposition to be a useful tool, the procedures must be inexpensive and timely, when compared with court proceedings.”

IP Australia issued a consultation paper – Resolving Trade Mark Opposition Proceedings Faster – for public comment on the proposed changes. The comment period closes August 17.

Martin says the paper contains 11 proposals to address the issues of delays, costs and complexity of the opposition process. Further information about the proposed changes are available on the firm’s web site, fbrice.com.au.

“Opposition is a key process available to trademark owners who are adversely affected by acceptance of a trademark,” Martin says. “Many of the proposals, such as introducing statements of grounds and particulars, limited access to extensions of time and a cooling off period for negotiating parties, are processes already in place in other jurisdictions. While no doubt there will be much fine tuning of the details, it is likely that the 11 proposals will be in operation by 2010.”