RADLER found not to be generic for beer in New Zealand
The Intellectual Property Office of New Zealand has ruled in favour of DB Breweries in its dispute with the Society of Beer Advocats (SOBA) over its registered trade mark RADLER for beer: DB Breweries Limited v Society of Beer Advocats, Inc [2011] NZIPOTM 19 (13 July 2011).
In 2009, SOBA filed an application for invalidity, on the grounds that:
- RADLER was a generic term for a style of beer at the time the trade mark application was filed (2003);
- the term RADLER had not acquired distinctiveness since its registration;
- at the time the trade mark application was filed, the use of the trade mark would likely deceive or misled the public, and was, therefore, contrary to the law.
SOBA also lodged an application for revocation in 2009, on the grounds that:
- the term RADLER had become generic since its registration;
- the use of the trade mark in relation to beer was likely to deceive or cause confusion.
Application for Invalidity – section 73 of the Trade Marks Act 2002
SOBA submitted 40 statutory declarations in support of its contention that the term RADLER was generic in 2003 (when DB Breweries made its application to register RADLER). However, the Assistant Commissioner of Trade Marks B F Jones gave little weight to the statutory declarations, and pointed out that a majority of the declarants suggested that they were aware that RADLER was used as a term to describe a style of beer overseas (mainly in Europe), not in New Zealand. Nor did the Assistant Commissioner consider worthy the contention that at least a portion of the thousands of New Zealand residents who had immigrated to New Zealand from Europe (where it was accepted that in some parts RADLER meant a style of beer) would understand the term RADLER to signify a type of beer.
In the case that it was shown the term RADLER was generic at the time of the application, the Assistant Commissioner did not accept that there was any evidence to show that it had not subsequently become a distinctive trade mark.
SOBA alleged that at the time of the application members of the public would be misled or deceived into thinking that DB Breweries’ RADLER beer was a low alcohol beer. SOBA argued that the trade mark RADLER should therefore be declared invalid on the grounds that it was deceptive or misleading at the time of the registration. Again, the Assistant Commissioner did not believe that there was any credible evidence to support the contention, and dismissed it.
Application for Revocation – section 65 of the Trade Marks Act 2002
SOBA stated that the trade mark should be revoked because the term RADLER had become generic for describing a type of beer. After concluding that the burden of proof was a heavy one that rested on the shoulders of the applicant, the Assistant Commissioner stated that the applicant must prove that the genericism of the term had resulted from acts or inactivity by DB Breweries. Once again, the Assistant Commissioner placed little weight on the statutory declarations provided by SOBA, which, in the Assistant Commissioner’s opinion, “fail[ed] to provide any probative evidence to the [genericism] assessment”. The Assistant Commissioner declined to uphold SOBA’s contention that the term RADLER had become generic.
SOBA’s final ground of opposition was that the registration should be revoked on the grounds that, as a consequence of the trade mark’s use by DB Breweries, the trade mark is likely to deceive or cause confusion. The Assistant Commissioner concluded that SOBA failed to provide sufficient evidence that, as a result of acts or inaction by Dominion Breweries, the term RADLER was misleading or confusing the public.
