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Byron craft brewer loses 'Pacific Ale' battle

Byron craft brewer loses 'Pacific Ale' battle

Byron Bay's Stone & Wood has lost its legal battle to stop Melbourne's Thunder Road producing a beer carrying the words "Pacific Ale" on the label.

The Federal Court has dismissed an appeal by Stone & Wood against a 2016 judgment that found they had not proven competitors Elixir'sThunder Road had infringed their registered trademark.

The original decision was upheld by a panel of three senior judges including Chief Justice James Allsop AO, Justice Victor Nicholas and Justice Anna Katzmann, who disagreed with the appeal submissions and ordered Stone & Wood to pay Elixir's legal fees.

When dismissing the initial claim that Thunder Road had copied the name, Federal Court Justice Mark Moshinsky found Stone & Wood had not proven Thunder Road had infringed the registered trademark of its Pacific Ale label or engaged in misleading or deceptive conduct.

He concluded Pacific Ale was not a style of beer in the technical sense and said the word "Pacific" had been used descriptively.

Elixir boss Philip Withers said in a statement afterwards: “We feel vindicated in our actions and believe the decision is a victory for common sense and for craft beer drinkers throughout Australia.” 

Opening the appeal last year, counsel Philip Crutchfield QC told the court: "Consumers don't know the name Pacific Ale divorced from Stone & Wood. It's very clever what [Thunder Road] have done. They knew it was specific in mark and wanted to springboard off that."

Crutchfield said the use of Pacific Ale as a stand-alone brand was similar to the use of Grange when referring to Penfolds Grange wine.

"Brands matter in this industry, and names matter," he said. "Pacific Ale as a name only derives meaning ... from Stone & Wood. Pacific Ale in the Australian market only has meaning as a beer brand, or style of beer, because of Stone & Wood."

Stone & Wood co-founder Jamie Cook told The Northern Star the appeal was not about victory or loss, it was about the principal.

"This judgement is the closure of just one chapter in what has been a long drawn out process of us protecting our IP (intellectual property)," he said.

"It wasn't about winning or losing, it was about making a stand on behalf of our community - team, customers, drinkers and suppliers - it was about making a stand for originality and creativity."

Cook said there are a lot of businesses in this industry that search for new spaces and create new directions.

"It's fine for the rest of the industry to capitalise on the momentum created by that if it's done in a respectful way," he said.

"We also understand it's a cluttered market and occasionally we, as an industry, unknowingly step on each other's toes. In those situations, we can usually sort it out brewer to brewer."

Cook said Stone & Wood has demonstrated an ability to do that in the past.

"We changed our branding when we accidentally used a beer name that had been used by another brewer, our stance is about trying to maintain a respectful industry," he said.

"Meanwhile, we are now left with continuing our efforts to have our IP protected via the trade mark process, by dealing with the current opposition to the Pacific Ale Trade Mark registration which will take some time to resolve."