Trade marks for craft beer brands
As craft beer goes mainstream, how should brewers go about protecting their brands?
The rise of craft beer over the past decade has been a refreshing change in an industry previously dominated by a small number of global brands.
Chartered Trade Mark Attorneys David Gwilliam and Sri Dhevi Santhana Dass discuss the issues brewers large and small should consider when it comes to protecting valuable craft beer brands.
Large global brands vs craft beer breweries
In the UK alone there are over 2,000 commercial breweries of all sizes operating, confirming craft beer’s place in the mainstream.
The success of craft beer has also seen larger breweries that have historically focused on mass producing a small number of beers enter the market.
This has happened either by launching their own range of craft beers, such as Heineken’s Maltsmiths range, or buying up existing craft beer breweries, such as Carlsberg’s acquisition of London Fields Brewery.
With so much competition in the market, it is more important than ever for beer producers to use trade marks that stand out, and of course to ensure that rights to those trade marks are secured appropriately.
However, the convention in the craft beer industry for many trade marks to be used transiently or on a small scale, such as for limited edition or small batch beers, can present brewers with a dilemma about how far to go to clear and protect those trade marks.
Determining the value of the trade mark
In an ideal world, a brand owner in any field would select a trade mark well in advance of going to market.
They would conduct clearance searches in whichever jurisdictions that trade mark is to be used to ensure that there no existing trade marks that would conflict with theirs before applying to register the trade mark in each of those jurisdictions in order to provide protection against anyone else subsequently using or applying to register a conflicting trade mark there.
However, this requires not only a tremendous amount of foresight and forward planning, but there can be significant costs associated with conducting clearance searches and applying to register trade marks, especially if a large number of jurisdictions are involved.
It is important for any business to make smart choices about how to allocate their effort and funds for clearing and protecting a trade mark in a way that is consistent with the value of that trade mark to the business.
This can be a particularly difficult judgement when a trade mark is only intended to be used transiently or on a small scale.
In such cases, it is clearly not proportionate to conduct extensive clearance investigations and invest significantly in registering the trade mark internationally. It is tempting to simply ignore the possibility of encountering a conflicting trade mark altogether and press ahead without conducting any clearance investigations whatsoever.
A Good Call to check first
The difficulties that can arise when adopting a new trade mark are illustrated by Manchester-based brewery Cloudwater.
It ran into a dispute with Heineken (the owner of the Foster’s lager brand) over the launch of its Good Call Soda range. “Good Call” was a slogan to advertise Foster’s.
Cloudwater described in a blog post the effect that this dispute caused to their business at precisely the time that they were hoping to be able to concentrate fully on the launch of their new product range.
It is always prudent to take proportionate steps to minimise the risk of running into a dispute that may take funds and attention away from the launch of a new product.
The most straightforward steps include simply investigating what trade marks are already in use – a Chartered Trade Mark Attorney is best placed to assist you with this.
There are online resources such as untappd, ratebeer or BeerAdvocate that can also help you as well as investigating what trade marks are already registered using the basic search functions on the trade mark registers of the United Kingdom and European Union, or the international trade mark search tool, TMview.
A Chartered Trade Mark Attorney is able to provide advice in relation to any troubling existing brands or trade mark registrations that are identified in this way and assist in selecting an alternative lower-risk trade mark.
Or at least ensuring that any risks are properly understood and assisting in the formulation of a suitable contingency plan in the event of a dispute.
Registering a trade mark in the United Kingdom is an attractive option
A more robust approach would be to engage a Chartered Trade Mark Attorney to conduct a United Kingdom clearance search or apply to register the trade mark in the United Kingdom. Either of which are possible at a cost that is likely to be proportionate with the value of a transient or small scale trade mark.
In the event that trade mark protection outside the United Kingdom is required, the cost of this can also be put off by up to six months after an initial United Kingdom trade mark application has been filed without losing any rights.
The approach of applying to register a new trade mark in relation to craft beers appears to have gained significant popularity over the past decade. The number of UK trade mark applications filed in Class 32, which covers beer, increasing from around 1,000 per year in 2010 to around 2,500 per year in 2019, in line with the rise in popularity of craft beer.
One of the largest single filers of these trade mark applications is BrewDog, which currently owns over 150 trade mark registrations covering the UK as well as a significant international portfolio of trade mark registrations.
The threat of a new trade mark in the area of craft beer encountering a conflict must therefore be taken seriously, especially with so many new trade marks being registered each year and the fact that large global brands with sufficient resources to take extensive legal action have become more active in the field.
Threats of legal action can backfire
The enforcement of trade mark rights is not always a straightforward matter and in the field of craft beer, as with any field that pitches large global brands against small local businesses, the larger brands can suffer significant negative publicity if they are seen to take too heavy-handed an approach, regardless of whether their actions are legally justified.
This was clearly illustrated by the negative publicity suffered by BrewDog in the mainstream press for threatening legal action against an independent pub based in Birmingham called "Lone Wolf", which is also the name of BrewDog’s gin brand.
BrewDog subsequently backed down, blaming their allegedly “trigger-happy” lawyers for the legal action, but not before the damage was already done as Lone Wolf bar had submitted to the legal complaint and agreed to change the name of their bar.
It is clear that adopting any new trade mark carries a risk of encountering a dispute, which has the potential to cause significant disruption at a time when it would be better to concentrate on developing the new trade mark.
In addition, relying on the reluctance of big brands to take legal action for fear of suffering negative publicity does not seem to offer effective protection from these negative effects.
However, there are a range of cost-effective and proportionate actions that craft beer producers can take to manage the risk of encountering a dispute, regardless of how transient or small scale the use of the new trade mark is expected to be and a Chartered Trade Mark Attorney will be able to advise you about these steps and which may be appropriate for your particular situation.
David Gwilliam and Sri Dhevi Santhana Dass are Chartered Trade Mark Attorneys at Adamson Jones.Read more food and drink insight