Aligning a company’s trade mark strategy with its marketing plans and commercial objectives can be crucial in protecting and maintaining the company’s brand portfolio. This is highlighted by the recent decision issued by the Trade Marks Office in the closely watched trade mark dispute between CUB Pty Ltd (formerly Fosters Australia Limited, “CUB”) and Elixir Signature Pty Ltd (a member of the group of companies operating the Thunder Road Brewery in Melbourne, “Elixir").

The dispute arose as Elixir wanted to revive famous beer brands from the past, including CUB’s ‘heritage’ beer brands such as Ballarat Bitter, Tooths Beer, Abbots Lager and Cairns Draught. Elixir approached CUB to discuss a potential licensing deal which CUB declined. As a result, Elixir sought to remove 54 of CUB’s registered marks on the basis of non-use.

Elixir’s arguments were primarily twofold: firstly, it argued that the attacked marks were no longer part of CUB’s core business and that CUB had not used the trade marks in the 3 years preceding the non-use action (“the Relevant Period”). Secondly, Elixir argued that CUB lacked the intention to use the trade marks. It argued that CUB intended to merely stockpile the heritage beer brands as evidenced by CUB’s fresh applications to re-register 5 of its older, already registered marks.

Despite there being no proof of use of the marks during the Relevant Period, CUB successfully defended 41 of its Australian registrations from Elixir’s removal attacks by invoking the Registrar’s discretion not to remove registrations under section 100(3) of the Trade Marks Act 1995 (Cth).

The key to CUB’s success lay in its evidence that the attacked marks still enjoyed residual reputation in the marketplace through continuing visibility in Australian pubs, hotels, breweries, bottle shops, websites, social media, museums, private collections, artworks, and second-hand trades. Crucially contributing to CUB’s residual reputation was the fact that CUB had sold ‘limited run’ or special edition releases of goods under the attacked marks prior to the Relevant Period as well as after Elixir filed its non-use application. Further, CUB stated that it intended to continue such ‘’limited run’ releases in the future.

As such, the Registrar considered that if CUB’s trade marks were removed from the Register and another trader sold the same goods under the same brand, there would be a high likelihood of consumers being misled as to the source and nature of the goods. The Registrar regarded CUB’s use of the trade marks (although falling outside the non-use period) and its intention to continue to use the trade marks in the future as proof that CUB had not abandoned the trade marks. CUB was also able to defend opposition to its 5 new applications to re-register some of the old marks on the basis of evidence of its future commercial plans to use those marks.

The Registrar’s decision can be appealed, but in the interim CUB’s commercial plans and marketing strategy have saved its trade marks. Watch this space for further updates on the decisions.

Take Home Lessons

Businesses must consider their trademark portfolio and strategy when developing and implementing commercial and marketing plans. If CUB had not previously made ‘limited run’ releases of goods under the attacked marks or if it did not have plans for such future ‘limited releases’ or if it had not been monitoring and maintaining the market presence of its legacy marks, it is likely that evidencing residual reputation in the marks would have been difficult and the Registrar would not have exercised discretion to allow the marks to remain on the Register.

Businesses should aim to bridge the gap between their legal and marketing teams to work closely on a trade mark strategy that supports and furthers their business goals.