In Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCAFC 186, Urban Alley Brewery Pty Ltd (“Urban Alley”) initiated infringement proceedings against La Sirène Pty Ltd (“La Sirène “) under s 120(1) of the Trade Marks Act 1995 (Cth) (the Act) for using the words “Urban Pale” on the label of its beer product on web and social media. Urban Alley relied on its trade mark no. 1775261 for Urban Ale (“word mark”) in class 32 for beer (priority date: 14 June 2016).

La Sirène filed for cross-claim to cancel Urban Ale under s 88(1)(a) on grounds that the mark was not to any extent inherently adapted to distinguish its goods or services from others under s 41(1) and that the word mark was deceptively similar to trade mark no. 1760362 Urban Brewing Company (“Urban Brewing Company Trade Mark”) under s 44(1) of the Trade Marks Act 1995 (Cth). 

La Sirène filed a trade mark application for Urban Pale (trade mark no. 1806074) in class 32 for products including beer on the 4 November 2016. The application met with an adverse examination report and La Sirène subsequently withdrew the application. 

Federal Court of Australia (Full Court)

Judges: MIDDLETON, YATES and LEE JJ

Date of Judgment: 4 November 2020

Appeal from: 
Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCA 82 
Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd (No 2) [2020] FCA 351

At trial, the primary judge dismissed Urban Alley’s allegations for infringement. The primary judge took into account the La Sirène Label Mark (trade mark no. 1961656 for class 32 in respect of beer, having a priority date at 26 October 2018) and La Sirène word mark (trade mark no. 1961654, being “Farmhouse Style Urban Pale by La Sirene” having priority date on 24 October 2018 in class 32 in respect of beer) as defences to infringement allegations under s 122(1)(e).

The primary judge considered the La Sirène Label Mark and took the view that La Sirène had not used “Urban Pale” as a trade mark for distinguishing its goods and services. The words “Urban Pale” though featured prominently in bold fonts were descriptive and functioned as laudatory epithet. His Honour considered the words “BY LA SIRÈNE” below “Urban Pale” as acting as a badge of origin for its goods and services. The withdrawal of its “Urban Pale” application corroborated with his Honour’s findings. Urban Alley subsequently sought cancellation of La Sirène’s marks (La Sirène label mark and La Sirène word mark) but his Honour concluded that the grounds for cancellation were not made out.

On the 17 March 2020, the primary judge concluded the trial at the Federal Court of Australia by ordering the cancellation of trade mark no.1775261 for Urban Ale. 

Urban Alley appealed against the decisions of the primary judge and sought leave to appeal to the Federal Court of Australia (Full Court). In its amended notice of appeal, Urban Alley contended that the primary judge had erred by cancelling the word mark “Urban Ale” on grounds of s 41 and s 44. Urban Alley also challenged the findings of the primary judge that La Sirène had not used “Urban Pale” as a trade mark and that the primary judge should have ordered the cancellation of the La Sirène label mark. 

Urban Alley accepted that the word mark was insufficient to distinguish its beer as matter of fact before the filing date and that s 41(3) should be applied but argued that the word mark is sufficiently inherently adapted to distinguish its beer products to fall outside the threshold of ss 41(3) and 41(4).

Urban Ale Not inherently adapted to distinguish – s 41

The primary judge held “Urban” was descriptive to mean craft beer brewed in inner city location and “Ale” was laudatory and conveyed the meanings of fashionable, trendy or cool in relation to the style or flavour of beer. The meanings were supported by the deposition of Mr. Kirkegaard, a well-known journalist who wrote regularly on beer and there was no challenge to that evidence. The Full Court upheld the primary judge’s findings and concluded that “Urban Ale” was not to any extent inherently adapted to distinguish and others may want to use the same words (i.e. Urban Pale) to characterize their kind of beer. 

Urban Ale Substantially identical or deceptively similar Urban Brewing Company Trade Mark – s 44

Urban Alley contended that there was no association between the words “Ale” and “Brewing Company” and that the primary judge had erred in finding the word mark deceptively similar to Urban Brewing Company Trade Mark. The Full Court considered the mark as a whole, the imperfect recollection of a consumer with ordinary intelligence of the impressions of the marks being looked upon and held that a close association between “Ale” and “Brewing Company” could result in a confusion. The Full Court upheld the primary judge’s decision that the Urban Ale was deceptively similar to the Urban Brewing Company Trade Mark.

“Urban Pale” used as a trade mark

Given the Full Court’s findings that the word mark was not inherently adapted to distinguish, the words “Urban Pale”, being substantially identical or deceptively similar to the word mark would be seen as descriptive or laudatory in nature. The Full Court upheld the primary judge’s decision in holding that “Urban Pale” was not taken to function as a trade mark by La Sirène.

La Sirène Label Mark

Urban Alley contended that the primary judge ought to have found La Sirène label substantially identical or deceptively similar to its word mark “Urban Ale”. The Full Court had taken the view that the word mark was not registrable and therefore dismissed the appeal by Urban Alley. With the word mark being unregistrable, the infringement claims fell away and the appeal was eventually dismissed by the Full Court. 

Key Points

TThe case further confirms the observations made by the learned authors of Australian Trade Mark Law (Oxford University Press, 2nd ed, 2016) that the “central idea” to the marks is enough for a finding of deceptive similarity. The marks “Urban Ale” and “Urban Brewing Company” were held to be deceptively similar for identical goods including beer. The words “Ale” and “Brewing Company” convey different things but nevertheless had a close association and idea conveyed. Put together, the marks “Urban Ale” and “Urban Brewing Company” could in the minds of consumers with ordinary intelligence and imperfect recollection of the marks leave them wondering if the respective marks have the same origin.

Disclaimer: The above is provided to assist in the understanding of the decision by the Federal Court of Australia (Full Court). It should not be relied upon as legal advice. Any errors or omissions are the author’s. For queries related to the article, please contact the author here.