The importance of choosing an appropriate brand name to trade mark can be seen in the aftermath of the well-known and controversial “radler” decision from the Intellectual Property Office New Zealand (IPONZ) in July this year. The case, DB Breweries Limited v Society of Beer Advocates, Inc (NZIPOTM, 13/07/11), concerned a challenge to DB’s successful trade mark registration of ‘radler’ with IPONZ. In brief, the Society of Beer Advocates (SOBA) brought the challenge on the grounds that ‘radler’ was a generic or descriptive term at the time of registration (2003). SOBA argued that the registration should be revoked as DB’s use has caused the term to become a common name in the general public and is likely to deceive or confuse the public (see sections 17, 18, 66(1)(c), 66(1)(e) and 73 of the Trade Marks Act 2002). SOBA maintained that the term ‘radler’ pertained to a low-strength style of beer originating from Bavaria. In response, DB argued persuasively that in 2003, ‘radler’ was associated not with a generic term, but rather with Monteith’s beer of that name. Ultimately SOBA failed to demonstrate the contrary and DB’s registration of ‘radler’ has been maintained.
The case attracted enormous media attention, with the balance of opinion sympathising with SOBA’s position. Subsequent legal commentary has fiercely defended both positions however, and the case goes to show that brand names can be difficult and costly to maintain. Descriptive or generic names which other traders are likely to want to use should be avoided. Potential litigation could arise, for example, over the term ‘vintage’ used for cheese. Fonterra’s predecessor acquired the rights to ‘vintage’ in the 1960s and has recently written to cheese makers warning them to stop using the name. Litigation by Fonterra on this issue would be costly for parties on both sides. Defending and/or changing trade names can be very expensive and we suggest consultation with a trade mark attorney should be sought early on in any branding development.