Federal Court of Australia Rules in Favour of Thunder Road Brewing Company in “Pacific Ale” Action Brought by Stone & Wood Brewing

July 21, 2016

Federal Court of Australia Rules in Favour of Thunder Road Brewing Company in “Pacific Ale” Action Brought by Stone & Wood Brewing

Court Rejects Stone & Wood Allegations of Passing Off and Deceptive and Misleading Conduct

Thunder Road Brewing Awarded Costs, Prevails in Cross Claim

21 July 2016 – MELBOURNE – Thunder Road Brewing Company welcomed a comprehensive decision by the Federal Court of Australia today that found in its favour in an action brought by Stone & Wood Brewing Co.  Stone & Wood brought the action against Thunder Road Brewing alleging that it had engaged in deceptive and misleading conduct in contravention of the Australian Consumer Law, was “passing off” and was violating a registered trademark by selling Thunder Road “Pacific Ale.”

Thunder Road introduced a Pacific Ale in 2015 that was brewed with Galaxy hops, a relatively new hop varietal developed in Australia.  Shortly thereafter, Stone & Wood brought the current legal action against the company.

In today’s decision, the Court found:

  • “In relation to Stone & Wood’s claims that the respondents have engaged in misleading or deceptive conduct (or conduct likely to mislead or deceive) and made false or misleading representations in contravention of the Australian Consumer Law, and engaged in passing off, I conclude that these claims are not made out.”

 

  • “In relation to Stone & Wood Group’s claim that the respondents have infringed the Registered Trade Mark, I conclude that this claim is not made out. In my view, the words ‘Pacific Ale’ and ‘Pacific’, which have been used by the respondents in relation to beer, are not deceptively similar to the Registered Trade Mark.”

 

  • “I conclude that Elixir’s cross-claim based on s 129 of the Trade Marks Act is made out. Stone & Wood threatened to bring an action against Elixir (Thunder Road) for infringement of the Registered Trade Mark. Stone & Wood has not established that either s 129(4) or (5) applies. Specifically, it has not established that the acts of Elixir constituted an infringement of the Registered Trade Mark; nor has Stone & Wood established that with due diligence it began and pursued an action against Elixir for infringement of the trade mark.”

 

  • “In my view, the word ‘Pacific’ has a descriptive aspect to it when used in relation to both Stone & Wood’s and the respondents’ products. ‘Pacific’ is, of course, the name of the Pacific Ocean… (the Court continues)…This evidence calls to mind the observation of Stephen J in Hornsby, quoted above: “There is a price to be paid for the advantages flowing from the possession of an eloquently descriptive trade name”. In the present case, 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.”

 

“We are very pleased with the Court’s decision today.  We have always believed that Stone & Wood was wrong to bring this action against us and defended the matter vigorously,” said Philip Withers, CEO, Thunder Road Brewing Co. 

“Developing new and exciting beers for consumers is what Thunder Road, and the craft brewing industry is all about.  We feel vindicated in our actions and believe the decision is a victory for common sense and for craft beer drinkers throughout Australia,” said Withers.

Thunder Road was represented in the action by HWL Ebsworth Lawyers.

For additional information on Thunder Road Brewing Company, please visit: www.thunderroadbrewing.com

 

Media: Terry Alberstein
M: 0458-484-921

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