- Brick Lane Brewing Co Pty Ltd (Brick Lane) is a brewing company that has manufactured, distributed, advertised and sold beer in Victoria since 2017.
- Brick Lane issued a media release on 21 July 2021, announcing its new “Sidewinder” beer range. The release included an image of a can of “Sidewinder”.
- Sales commenced in August 2021.
- On 26 July 2021, Mighty Craft Ltd (Mighty) announced that it was partnering with Torquay Beverage Co Pty Ltd (Torquay) and comedians “The Inspired Unemployed” to launch “Better Beer”. The company Better Beer Company Pty Ltd (Better Beer) was incorporated for this venture.
- Sales of “Better Beer” commenced in October 2021.
- The two beer cans had similar features:
- Both were in 355 ml cans;
- Both were an off-white;
- both had forms of orange, yellow and blue stripes which wrapped around the beer can;
- Both used similar coloured font and text;
- Brick Lane alleged contraventions of section 18 and 29 of the Australian Consumer Law against Mighty, Torquay and Better Beer.
- Was the Better Beer can misleading or deceptive to consumers by conveying an association with Brick Lane through similar packaging to the Sidewinder beer?
- Did consumers have sufficient recognition of Brick Lane products, packaging and get up so as to be confused, mislead or deceived by Better Beer’s product packaging?
- Stewart J dismissed Brick Lane’s claim.
- Brick Lane could not establish any recognisable reputation in its get up, trade dress, packaging, etc. with consumers so as to enliven sections 18 and 29 against the respondents.
- Stewart J noted that, while reputation is not an essential element to prove section 18, the question was whether the particular get-up or name is likely to deceive consumers familiar with Brick Lane’s product to believe that the two products were associated.
- As such, it is still necessary to prove that there is some association in the mind of the relevant sector of the public between the two products. Applicant’s need to identify features in the packaging (the “get-up”) that are known to the public which invites deception if other traders use them.
“The words that I have emphasised demonstrate that although it might be said that a particular reputation is not necessary, it is nevertheless necessary that there is some association in the mind of the relevant sector of the public between the applicant’s product and its get-up such that confusion might arise from the use of the same or a similar get-up in relation to the respondent’s product. Without the pre-existence of such an association, it could not be said that the use by the respondent of the same or a similar get-up suggests a misleading or deceptive association. The inquiry does not proceed on the assumption that the hypothetical consumer member of the relevant class is familiar with the applicant’s product; that is required to be established.
As explained by Perram J in Mars Australia Pty Ltd v Sweet Rewards Pty Ltd  FCA 606; 81 IPR 354 at , the claim requires the identification of features of the applicant’s packaging (referred to as “get-up”) that are known to the public mind as the springboard for the argument that consumers are deceived by a particular imitation. This was accepted by the Full Court on appeal: Mars Australia Pty Ltd v Sweet Rewards Pty Ltd  FCAFC 174; 84 IPR 12 at  per Emmett, Bennett and Edmonds JJ. See also Interlego AG v Croner Trading Pty Ltd  FCA 992; 39 FCR 348 at 387 per Gummow J (Black CJ and Lockhart J agreeing): “… reputation and likelihood of deception are distinct issues, the first proceeding the second, so that if the plaintiff fails on reputation that is the end of the case.” In Verrocchi FCAFC at  it was said that “it is usually necessary to establish a relevant reputation in the get-up that has become distinctive of the relevant business or products”, but it is not necessary to establish an exclusive reputation.”
(Justice Stewart at paragraphs  to )
The full text is available here: https://www.judgments.fedcourt.gov.au/judgments/Judgments/fca/single/2023/2023fca0066
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