By Andrew Starke
Lion Nathan Australia has successfully defended its Tooheys New brand with the Trade Mark Office ruling that a brewer could not register as the New South Brewing Company.
The decision marks the end of a two-year dispute with use of the word ‘New’ at the centre of the battle.
In her judgment Hearing Officer: Trade Marks Hearings, Bianca Irgang, noted that Tooheys had obtained trade mark registration for the word ‘New’ for Class 32: beers and ales in 2005 and that the brewer had used the word in various advertising campaigns since 1931.
She also found that marketing campaigns like ‘Give that Man a New’ and ‘Tooheys puts the New in NSW’, coupled with the common Australian practice of shortening names, had led to a tendency amongst both consumers and the trade to refer to Tooheys New simply as New.
“In particular, I note that the declarations all consistently state that consumers order Tooheys New on tap by asking for ‘a schooner of New’ or ‘a middy of New’. In exhibit SMEM-6, the statutory declaration of Mr Colin Guy states that when members of the public call up Tooheys to order beer, they refer to Tooheys New as NEW. Mr Guy also avers that he has seen bottle shop operators advertise the beer by refer simply to the word NEW as in “New Stubbies: $30.00” written on signs outside the shop,” said the judgment.
In February 2008 eAgency applied to register the New South Brewery Company with the Trade Mark Office, with Lion Nathan Australia formally opposing the application on September 4, 2008.
Irgang was also concerned that the applicant’s trade mark has the words ‘New South’ as it’s most prominent and striking elements, with ‘Brewing Company’ in much smaller letters below.
“Overall, I consider that, given the considerable and growing reputation evidenced by the opponent in its New trade mark, a significant number of consumers would at the very least experience a reasonable doubt as to the existence of some sort of connection between the opponent’s trade mark and the applicant’s trade mark,” said the judgment in rejecting the application.
Contacted by TheShout for comment, a spokesperson for Lion Nathan said: “Lion Nathan is simply protecting its trademark, as any company would do, and the judgement supports the fact 'New' is synonymous with Tooheys New in this category.”
The full judgement can be accessed by clicking here.