Steinlager markets itself as New Zealand’s finest beer, but its foray into a Japanese style frothie fell a little flat after a trade mark challenge from Asahi Beverages.
Lion NZ Ltd launched TOKYO DRY, as part of its Steinlager range in NZ in November 2016. For those beer lovers among us, the brew was described as “…a traditional New Zealand lager, brewed longer for a super dry Japanese style…”
Lion filed a NZ trade mark application for TOKYO DRY in April 2019 for goods including beer and non-alcoholic beverages. Asahi Beverages (NZ) Ltd, a Japanese brewer that sells a beer under the trade mark ASAHI SUPER DRY, opposed its registration including on the grounds that the mark:
- was descriptive of the goods for which registration was sought, including their geographic origin and style or type, especially in relation to beer;
- it had no distinctive character because other traders will wish to use the term to describe their beverages; and
- had not acquired a distinctive character through use or other circumstances.
Except in limited circumstances, a trade mark will not be registered in New Zealand if it is descriptive or does not have a distinctive character (i.e. consists only of signs or indications that may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, time of production of goods or rendering of services or other characteristics of goods or services.)
In the opposition, Asahi pleaded that:
The trade mark TOKYO DRY is descriptive of dry-style beverages manufactured in Tokyo or which have some other connection with Tokyo or with Japan more generally. The trade mark is descriptive of characteristics of the [specified] goods, including in respect of their geographic origin and style or type, especially so in respect of beer. The trade mark has no distinctive character, including because other traders will wish to use the term TOKYO DRY to describe their own beverages.
The Assistant Commissioner of Trade Marks found that:
- TOKYO within the mark did designate the geographic origin of beer and non-alcoholic beverages; and
- DRY was a description of a characteristic of the drinks.
and concluded the mark was descriptive and had no distinctive character.
I consider that other traders may yet reasonably wish to use TOKYO DRY or a similar mark to describe beer and non-alcoholic beverages that are sourced from Tokyo and that have a dry flavour profile. In my view, TOKYO and DRY are two adjectives that can be used in relation to the categories of the specified goods and there is “nothing catchy, striking or unusual in putting them together.
In NZ, it is possible to obtain a registration for a mark that is descriptive and non-distinctive if use of the mark prior to the filing date has been sufficient for it to have acquired distinctiveness or any other circumstances. Lion put on evidence of its use of the mark in NZ.
The Assistant Commissioner noted that the evidence of acquired distinctiveness would need to be substantial.
Whilst the TOKYO DRY mark had been used in NZ since 2016, it was considered to be used as a composite with the well known house mark STEINLAGER. This made it difficult to establish that the mark TOKYO DRY itself had acquired distinctiveness through use.
Although Lion filed evidence of use of its mark, including sales and advertising figures and examples of advertising, the Asst Commissioner was critical of the evidence as:
- there was no direct evidence from consumers;
- there was no independent evidence from trade witnesses, chambers of commerce, industry or other trade and professional associations in NZ;
- although sales figures and advertising expenditure were provided, there was no expert evidence led to compare this data relative to total beer sales in NZ and the marketing of beers; and
- direct evidence in relation to a number of points should have been provided, rather than evidence from Lion’s legal representative.
Registration of the TOKYO DRY mark was therefore refused.
The decision is a reminder for those businesses coining new trade marks in New Zealand and hoping to obtain a trade mark registration, that it pays to adopt inventive trade marks and avoid those that are descriptive or non-distinctive.
It might be appropriate to seek a registration for a mark in a distinctive form or with a house mark instead of a standalone word mark to obtain some protection. For example, Lion has a registration for STEINLAGER SUPER DRY and Asahi has registered the logo mark:
As Lion discovered, proving acquired distinctiveness in NZ is tricky. Only use prior to the filing date is taken into account and care must be taken to ensure the evidence filed is, where possible, direct and compelling.