HWL Ebsworth successfully defends Thunder Road over 'pacific ale'

15 March 2018

HWL Ebsworth has successfully defended the owners of Melbourne-based brewery Thunder Road in an intellectual property dispute brought by Byron Bay’s Stone & Wood.

Since 2010, Thunder Road has sold a range of beers described as ‘Amber’, ‘Golden’, ‘IPA’, ‘Pale Ale’ and ‘Pilsner’ under its ‘Thunder Road’ brand name and iconic Thor logo. Thunder Road introduced a new ‘Pacific Ale’ to the range in 2015, later renaming it simply as ‘Pacific’.

Stone & Wood had established its own variety of beer which it named ‘Pacific Ale’ in 2010. Stone & Wood objected to Thunder Road’s use of the terms ‘Pacific Ale’ and ‘Pacific’, claiming this contravened the Australian Consumer Law as it amounted to misleading and deceptive conduct as well as passing off at common law.

Stone & Wood amended its claim to include an allegation that Thunder Road also infringed a registered trade mark containing the words ‘Pacific Ale’ as part of its ‘Handcrafted Stone & Wood’ logo. Thunder Road filed a cross-claim under section 129 of the Trade Marks Act 1995 (Cth) on the basis that Stone & Wood had made groundless threats of trade mark infringement in its lawyers’ previous correspondence and had failed to pursue the claim by not including it in the initial filing.

HWL Ebsworth advised Thunder Road through Evan Stents (Partner, Melbourne) supported by Daniele Solomon (Special Counsel, Melbourne) and Scott La Rocca (Senior Associate, Melbourne).  HWL Ebsworth instructed barristers Colin Golvan QC and Peter Creighton-Selvay to represent Thunder Road in court. Deciding the matter in the Federal Court in 2016, Moshinsky J dismissed Stone & Wood’s claims and found in favour of Thunder Road on the cross-claim. Stone & Wood appealed.

In a decision handed down last Friday, 9 March, the Full Court of the Federal Court unanimously dismissed the appeal on all counts and awarded costs in favour of Thunder Road. In finding that Stone & Wood could not claim a monopoly on the terms ‘Pacific Ale’ or ‘Pacific’ based on its reputation, Allsop CJ, Nicholas and Katzmann JJ held:

The words ‘Pacific Ale’ and ‘Pacific’ do have (as the primary judge found) a ‘descriptive’ quality: that is, the word is apt to connote or evoke imprecise senses that do not distinguish the product. The vague geographic reference, the calming reference, and over this the reference to Australian and New Zealand hops are examples.

The’ battle of the brewers’ is not yet over, with Thunder Road separately pursuing an appeal in the Federal Court over an application by Stone & Wood to register the words ‘Pacific Ale’ as a standalone trade mark. The Full Court’s decision supports Thunder Road’s position that these words were not distinctive at the time the application was filed in 2011 and therefore Stone & Wood should not be entitled to the exclusive rights of a registered trade mark. That case is due to be heard in August.

This article was written by Evan Stents, Partner and Scott La Rocca, Senior Associate.

Evan Stents

P: +61 3 8644 3509

E: estents@hwle.com.au


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