Guides & Advice

Intellectual Property | Considerations and difficulties for breweries

Published: 1st November 2020
Area: Corporate & Commercial

Over the last few years, there has been an increase in trade mark applications for UK beer brands - read our previous blog on this topic.

There has since been a number of interesting beer-related trade mark decisions, and very public disputes, which demonstrates the range of difficulties that may be encountered by breweries (big and small) relating to their branding.

Here we provide a round-up of some of those significant trade mark decisions.

Hugo Boss vs Boss Brewing - Show them who’s Boss?

Earlier this year, it was well publicised that Boss Brewing applied for a trade mark for its logo, incorporating its trading name “Boss Brewing”.  They then received a cease and desist letter from Hugo Boss, the fashion giant, requesting that they ceased using the name “Boss”, and their application was opposed.

This was resolved after months of negotiations, with their beers "Boss Black” and “Boss Boss” changing to “Boss Brewing Black” and “Boss Bossy”.  The brewery are also unable to sell any clothing under the Boss Brewing name.

This case demonstrates that larger brands will often strongly defend their brands, even where they do not have trading activity or trade marks relevant to the brewing industry.

This dispute also received widespread media attention as a “David vs Goliath” battle, when comedian Joe Lycett temporarily changed his name by deed poll to Hugo Boss.  Hugo Boss was perceived as a bully in this coverage, which should be a real consideration for larger brands when looking to enforce their rights against a smaller brand or business.

HBO vs Wadworth Brewery - Game On

Another large brand which rigorously defends its marks is HBO, the television network which owns the rights to TV shows such as Game of Thrones.

They have been seen to oppose trade marks for applications for phrases incorporating “Game Of…” (see for example Game of Vapes), but in 2019 they opposed Wadworth brewery’s attempt to register a trade mark for their pump clip of their ‘Game of Stones’ beer, featuring an image of Stonehenge.

In this case, the brewery was successful in arguing that the Game of Stones sign would neither lead to a likelihood of confusion with the Game of Thrones brand, nor would it constitute a misrepresentation.  It was recognised however that the mark may bring the opponent’s sign “fleetingly to mind”, but this was not enough to successfully oppose the registration.

Whilst this is an example of a brewery successfully defending its position, they inevitably had to incur legal costs in doing so. The opposition was brought as a result of the brewery’s decision to name a beer using a play on words based on the show’s name, and to then seek to register this as a trade mark of their own.

Tiny Rebel Brewery vs Tropicana Products – Welcome to the Clwb

A further decision concerns Welsh brewery Tiny Rebel’s attempt to trade mark the name of one of their flagship beers, ‘Clwb Tropicana’.  This prompted PepsiCo (owner of the rights in the Tropicana soft drinks brand) to both oppose the trade mark application, and to write to the brewery to demand that they stop using the beer’s name.

The opposition succeeded both on the basis of “passing off” (PepsiCo owned ‘goodwill’ in the mark Tropicana in the UK, there would be a misrepresentation to consumers, and that PepsiCo would suffer loss as a result), and on the basis of the marks being similar with there being a likelihood of confusion on the part of consumers.

The beer has since been renamed Clwb Tropica IPA.

What do breweries need to consider when naming new beers or applying for trade marks?
  1. Continue to consider applying to protect flagship beer brand names through trade mark applications,

However, note that companies may have “watch services” set up which monitor for applications made that are similar to particular phrases or words. The various intellectual property offices also notify existing trade mark owners of similar applications.  Such notifications may bring the use to the attention of trade mark owners, which may not have otherwise been discovered.

  1. Undertake clearance searches for existing third party rights and/or seeking advice from an IP lawyer before the initial use of a new beer name

This is particularly important if you are concerned that it is similar to either another brewery’s brands or more widely known brands, even if they are not in the brewing industry.  This advice may be sought initially, and/or prior to making a trade mark application.

  1. If you receive a cease and desist letter, remember that it does not necessarily mean that that the other party has a valid claim.

Obtaining early legal advice on a letter received would allow you to make a judgment on the merits of the claim and to see whether any action needs to be taken.

  1. Even if the complainant’s case is not particularly strong, they may nevertheless seek to continue to oppose the application and/or demand that your use of the mark ceases.

Even meritless claims incur costs and time in defending them, and for example in UKIPO proceedings costs are only awarded to a successful party on a contribution basis, rather than the full costs incurred.  Early advice may help to avoid or reduce these costs being incurred unnecessarily.

What should existing trade mark or brand owners need to do if they become aware of a similar name being used or applied for as a trade mark?
  1. Consider opposing a trade mark application

Once the trade mark has been registered it can be more difficult and costly to invalidate it if it becomes a problem.

  1. Consider the status and size of the recipient if you are considering sending a cease and desist letter

You also need to consider the risks of taking action and bringing negative publicity (for example that experienced by Hugo Boss and BrewDog recently), against the threat to your brand/business that they pose.  It may be that a confidential arrangement can be reached, seeking to distance the brands from each other and setting out how they can co-exist effectively.

We understand that your brand is your public face and embodies your reputation

In many cases your brand and reputation will have been built up over many years and is one of your business' most important assets. Your trade mark helps you to differentiate your products and services from those of your competitors, and adds value to the products and services you sell.

If you have concerns around your brand or trade mark rights, or the activities of others, then our intellectual property team can guide you through the process, having acted for clients in the brewing industry previously.

Read more about our trade mark experience.

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