The number of craft beer breweries seems to have mushroomed in recent years with new brands opening across Europe, the US and Canada. Brewers in the sector like to pride themselves on the originality of their beer names, and yet it’s a sector that is seeing an increasing number of trademark conflicts. Novagraaf’s Theo Visser looks at the recent conflict over Picaroon’s Dark and Stormy Night.

Picaroons Brewery from New Brunswick, Canada, has brewed dark beer since 2006 and retails it on the market under the brand name Dark and Stormy Night. The name actually originates from the popular US comic strip Peanuts, known for its characters Charlie Brown and Snoopy.

The brewer recently ran into conflict with Goslings Rum from Bermuda, which has been producing rum under the brand name Black Seal since 1806, and also produces a cocktail drink made of Black Seal rum and Gosling's Stormy Ginger beer, which is sold under the brand name Dark 'n Stormy (see pictures below).

Goslings Rum objected to the name of Picaroons’ brand of beer and issued a cease and desist order to the Canadian brewery requesting it to discontinue use. Picaroons sought to argue that the two products were completely different from one another, adding that not all alcoholic beverages compete in the same market, according to CBC news. However, in trademark terms, beer is generally held to be similar to other alcoholic products, such as cider, wine and spirits. Picaroons apparently saw the writing on the wall and decided to discontinue its use of the brand name rather than fight the action in the courts.

According to the company’s Facebook post announcing the move: “We certainly did not go out without a fight, though after months and months we've officially lost the battle and are now retiring our lightest dark beer.”

Getting the naming right

Due to similarities in the brand names chosen for trademark applications, conflicts between trademark owners and applicants are becoming increasingly common in the beer and other sectors. Unless a thorough trademark search has been conducted before using or seeking to register a new mark in a chosen territory or class, there is a possibility that the chosen mark will be similar or confusingly similar to a mark that has already been registered, leading to potential infringement actions. If a third-party’s challenge is successful, it could mean that a business has to develop a new brand from scratch, stop its production process or even retire one of its products as Picaroons has done.