What not to call a brewery: Trade marks expert March 2020

Intellectual property expert James Omond

James Omond

The safest brand names for breweries to trade mark are those comprised of made up or arbitrary words, advises intellectual property lawyer James Omond.

Omond, founder of the Australian Beverage Trade Marks advisory, said choosing an invented name is the best way for breweries to minimise their chances of a costly intellectual property dispute.

“There’s no way that someone else can come up with something similar and have any justification for it,” he told Radio Brews News.

He said arbitrary names with no beer or brewing connection are also a good choice, because they minimise the chances of someone else selecting a similar name.

Avoid brewing terms, locations, surnames
Conversely, Omond said brand names incorporating common brewing terms such as hops, mash or malt may be problematic, even if they involve a play on words or technical differentiation.

“Although the play on words or the pun might seem a very significant difference to them and anyone who knows about brewing, that doesn’t mean that to the general public it’s going to differentiate between the two of them,” he said.

Listen to James Omond’s trade mark advice

He pointed to a recent dispute between two breweries in Michigan USA that went by the names of Original Gravity and Final Gravity.

“Unfortunately you’re either going to end up in front of a trade marks examiner, a trade marks officer or a judge and they’re not going to know what the difference is between those concepts,” the lawyer said.

He said other poor choices are common surnames, because they can’t be registered and someone else with the same surname could easily enter the market.

“Geographic names are not great either… if you try and register just the words, you won’t be able to get it up,” he said.

“People who go down that route, the only way they’re going to get their trade mark registered is in conjunction with a logo… it’s the logo that adds the descriptiveness to get it past stage one with the Trade Marks Office.

“Even once you’ve got it registered, the problem is that someone can set up five kilometres down the road and incorporate the location into their brand.

“You can’t do anything about that… even though you were there first, because it’s not being used as a trade mark, it’s being used in a descriptive sense.”

Beer branding fraught
Omond said that beer presents more intellectual property challenges than wine, because there is often a name applied to the beer itself, rather than just a varietal such as pale ale or shiraz.

“The producers will have their principle brand but then they’ll have a sub brand… that from a technical perspective is a trade mark,” he said.

“I think producers possibly don’t stop to think about that as often.”

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