Updated: Thunder Road wins Pacific Ale case

pacificaleStone & Wood failed to establish its misleading or deceptive conduct, passing off and trade mark infringement claims against Thunder Road, the Federal Court has ruled.

In a decision handed down at 9.30am today, Justice Mark Moshinskyconcluded that ‘Pacific Ale’ is not a ‘style’ of beer in the technical sense of a style identified in style guides used in beer competitions.

“It is possible that some consumers may regard ‘Pacific Ale’ as a style of beer in a non-technical sense, but the evidence does not establish that a substantial number of consumers would so regard it,” he said.

However, he said the dominant feature of Stone & Wood’s registered trade mark was the name ‘Stone & Wood’ rather than ‘Pacific Ale’.

“The words [Pacific Ale] appear in small print relative to the words ‘Stone & Wood’. They occupy a subsidiary place in terms of size and positioning.

“The words ‘Pacific Ale’ are not an essential feature of the Registered Trade Mark,” he concluded.

Justice Moshinsky found that it would be unlikely that a consumer would order one product thinking he or she was ordering the other, as submitted by Stone & Wood.

“The decals are quite distinct. The words ‘Stone & Wood’ are not present on the Thunder Road Pacific decal and the colours are different,” he said.

He said that the word ‘Pacific’ has a descriptive aspect to it when used in relation to both Stone & Wood’s and Thunder Road’s products.

“‘Pacific’ is, of course, the name of the Pacific Ocean. It can be used adjectively to refer to someone or something that pertains to the Pacific Ocean (for example, Pacific islander, Pacific solution). It is also an adjective which means peaceful or calm (among other meanings),” the Justice said.

“That the word has a descriptive aspect is underlined by the reasons why Stone & Wood chose the name in the first place.”

Justice Moshinsky said that by choosing a name for its product that has a descriptive aspect to it, Stone & Wood ran the risk that others in the trade would use it descriptively and that it would not distinguish its product.

Thunder Road also succeeded in its cross-claim against Stone & Wood, with the court ruling that Stone & Wood made groundless threats to bring legal proceedings for trade mark infringement.

Any damages to be awarded for loss to Thunder Road flowing from these threats will be dealt with at a later hearing.

Justice Moshinsky ordered Stone & Wood to pay Thunder Road’s costs.

Thunder Road Brewing Co has welcomed the ruling, while Stone & Woodmaintains the proceedings were about “making a stand for originality and creativity”.

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