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Court rules on ‘Urban Ale’ trade mark battle

By James Atkinson, The Shout

The Federal Court of Australia has ruled on a long-running intellectual property dispute between Melbourne breweries La Sirène and Urban Alley.

Docklands-based Urban Alley in February 2018 lodged Federal Court proceedings alleging La Sirene infringed its Urban Ale trade mark; and misleading and deceptive conduct, as well as passing off, by the Alphington brewer.

Justice O’Bryan on Friday dismissed Urban Alley’s claims, finding there were “overwhelming reasons” why La Sirène’s marketing and sale of its Urban Pale product did not infringe Australian Consumer Law or constitute passing off.

“First… the name ‘Urban Ale’ is descriptive of Urban Alley’s beer product,” said Justice O’Bryan.

“While a descriptive word may become distinctive of a producer’s goods through use, the evidence falls well short of establishing that Urban Alley had a reputation in the name Urban Ale as at October 2016.”

He said the packaging and labelling of the La Sirène Urban Pale product differed “in fundamental ways” from that of the Urban Alley product.

“I do not believe that any segment of the market into which Urban Alley and La Sirène sold their respective products would have been misled by the packaging of La Sirène’s product or its associated marketing into believing that the products had the same source,” he said.

Justice O’Bryan dismissed Urban Alley’s application to cancel the registration of La Sirène’s trade mark, ‘Farmhouse Style Urban Pale By La Sirene’, instead upholding La Sirène’s application to have the Register of Trade Marks rectified by cancelling the Urban Ale mark filed by Urban Alley.

Responding to the decision, Urban Alley executive chairman Dean Grant told TheShout: “Legal issues are always complex and while we are disappointed in the decision on our trade mark, our operations will be unaffected.”

“Our Urban Ale is a beer we are very proud of and as we enter our third year, we are delighted with our strong growth and the consumer reaction.

“The craft beer market continues to be exciting and vibrant, challenging the boundaries of the beer industry.

“From time to time, brands overlap. We will continue to trade with our Urban Ale as a key part of our offering.”

La Sirene co-founder Eva Nikias told TheShout the company is “delighted with the result”.

“It is great that common sense has prevailed. Our Farmhouse Style Urban Pale product has received such great recognition (including Top Beer 2017 The Australian) and is so well loved by our consumers, it is wonderful that we don’t have to make any changes to the branding of such a successful product,” she said.

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