With the number of trade mark registrations for craft beer brands reaching its highest level since 2007, and 520 new breweries opening in the UK last year, the craft beer industry is certainly alive to the need for brand protection.
This article explores how a craft beer brand can be protected and how best to avoid a dispute, as well as highlighting a recent high profile dispute.
Protecting a craft beer brand
The best way to protect a brand, whether it be a name, logo or shape, is to secure a registered trade mark. Once registered, you control who can and cannot use your trade mark or a confusingly similar mark in the same or too similar categories to those you have registered it against.
You can give permission for others to use it for a fee, or take action against those who are exploiting it.
The protection afforded by a registered trade mark can be extensive but there are some limitations on what you can and can't protect as a trade mark which you'll need to consider before you seek to register it. For example:
- the mark cannot describe the goods and services for which protection is sought (eg the name "Pale Ale" for an IPA has been deemed too descriptive);
- the mark must be distinctive and so it will be difficult to protect a common word or phrase that is used in the market (eg "Hoppy" for beer is unlikely to be protectable given it is a commonly used phrase in the industry, whereas "BrewDog", being a made up name is clearly distinctive); and
- the mark cannot be deceptive nor offensive.
Avoiding a dispute – the benefit of a clearance search
Assuming the brand is registrable as a trade mark it is advisable to conduct a trade mark clearance search to make sure no one else has earlier rights (eg an earlier registered identical/similar trade mark in respect of identical/similar goods) that may block your use or registration of the mark.
"You should protect your brand by applying for trade marks early. Otherwise, it could prove costly."
If the search comes back clear then you are free to apply to register the brand as a trade mark. Whilst it is possible to search and apply for trade marks yourself, it's advisable to instruct a trade mark professional, not least because they have the relevant expertise.
Disputes that have arisen over the last year
You should protect your brand by applying for trade marks early (ideally before the product is released on the market). Otherwise, it could prove costly. Indeed, with the number of trade marks in the industry rising, it’s not surprising that there have already been some notable disputes and they are only set to become more commonplace.
This July, the Intellectual Property Office ruled against BrewDog in a trade mark dispute with the Elvis Presley estate. BrewDog launched "Elvis Juice" IPA in 2015, garnering sales of nearly £2m in 2016. The Authentic Brands Group (ABG) - who managed the use of Elvis' name and owned the "ELVIS" trade mark for goods including beer - objected to BrewDog's two trade marks; "Elvis Juice" and "BrewDog Elvis Juice".
The Intellectual Property Office decided that there was a likelihood of confusion between the names, and the average consumer would assume that the BrewDog goods came from or were related to ABG's trade mark; consequently BewDog's two trade mark applications were refused.
The last word
So to try to avoid disputes or forced rebrands you should be thinking at a very early stage whether your brand is protectable as a trade mark, whether anyone else has conflicting earlier rights and if not get in early with a trade mark registration. If you have any queries our team would be happy to answer them directly.
About the authors:
Jeremy Drew has extensive experience in matters concerning the retail and sports sectors, IP and technology. He advises on the full range of disputes, advisory and transactions. Much of his practice has an international flavour, including worldwide transactions, leading international litigation and complex European arbitrations. He is often cited in the media including City AM, the Guardian, the Telegraph and the Financial Times.
Ben Mark provides support on a wide spectrum of IP related matters. He advises on all aspects of IP protection and enforcement, with a focus on trade markets, copyright, designs and confidential information. His clients include members from the retail, online/e-commerce, financial services and insurance sectors.