An interesting case is literally "brewing" in Australia.

It relates to a number of old beer labels (up to 67 in total) which have belonged to Foster's Group (SABMiller) under their Carlton United Breweries brand, for, in some cases, 120 years.

The law relating to trade mark registrations in most jurisdictions is that if there has not been any commercial use of a registered trade mark for a set period of time (usually the past three years) for the product or services for which it is registered then it can be revoked by a third party for non-use.

This is a kind of "use it or lose it" scenario, where a third party wishing to use a new name will first check the local intellectual property office trade mark records to see if the name is free for them to register.

Use it or lose it

If the third party finds a registered trade mark which is a complete bar to their use and registration of their new name, and covers the same activity they want to use the name on, they have the option of checking in the marketplace to see if that name has been used over the past three years. If there hasn't been any commercial usage of the name, then the validity of that trade mark registration is open to attack by filing a non-use revocation action.

In the case of Thunder Road Brewing Company v Carlton United Breweries, the third party (Thunder Road) is trying to show is that Fosters have not made any genuine attempt to commercially use their beer brands on beer during the statutory three year period, and as a result, all of the registrations vulnerable under the legislation should be revoked.

Thunder Road argues that even if Foster's can show use of any of the brands on beer in the relevant three year period, such use is not bona-fide commercial use.

They aim to prove that any use that may have taken place is simply "token use" aimed at defending the trade mark registrations from a non-use revocation action.

Foster's claims that the action taken is equivalent to somebody coming to your house and taking your family photographs.

This raises an interesting question regarding the "residual reputation" of the brand or brands.

Residual reputation

As an example, in New Zealand, LEOPARD beer has for a long time not been seen on the shelves in bottle stores. Yet if anybody mentioned the word "Leopard" as a beer label, the majority of New Zealanders over 40 or 50 immediately associate the name as a Lion brand of beer. Some would even say that it was brewed in Napier.

So, can a "residual reputation" created by historical use, save a trade mark that has not otherwise been used, from being revoked?

In Australia, it probably can be enough to defend a trade mark registration from attack for non-use - we will soon see when the result comes out concerning the attack on the validity of the Foster's trade mark registrations.

But what about New Zealand?

The law in New Zealand might be different - "use it or lose it" might be the end of the story here. The Intellectual Property Office of New Zealand arguably has a limited discretion to maintain a registration that has not been used, but it is not clear when that discretion might be exercised.

If you have not made commercial use of your trade mark for the goods or services for which it is registered for a continuous 3 year period, there is a serious risk it could be revoked for non-use by a third party.

So, how does the Leopard scenario (as mentioned above) change things, if at all?

There is little doubt in my mind that Lion could show that a significant number of people associate the name LEOPARD with the well-known brand of beer marketed by Lion in the 1960s and 1970s.

While the trade mark registration for LEOPARD may be able to be revoked for non-use, I believe the residual reputation in the name would be sufficient for Lion to bring a successful action under the FTA to show that use by an unauthenticated third party of LEOPARD on beer, would amount to misleading or deceptive conduct in the course of trade. And Lion could also probably successfully oppose any third party application to register the trade mark, also based on its residual reputation.

So let's wait and see what develops in Australia with the decision of the Australian trade mark office due in a few months time. My pick is that the authorities there will side with Foster's and say that the "residual reputation" is strong enough for the discretion to be exercised in Foster's favour, and for the use which has taken place, in combination with the earlier reputation, to save the registrations from being revoked.