Aussie Catering Company Pokes Brewery Over Trademark Spat, Now Finds Itself Potentially Losing The Mark Entirely

from the don't-poke-the-bear dept

It's a point we apparently need to keep hammering home: for there to be trademark infringement, there must be simultaneous use of a validly held trademark in the same market and there must be real or potential customer confusion. Too often businesses throughout the world are under the impression that trademarks are far more broad than they actually are and that they can be used like a cudgel to smack change out of the pockets of other businesses, competing or otherwise. There are risks to this behavior, including a ding to the bully's reputation, backlash from the public, and a loss of money spent on a legal action that need not have occurred.

And, sometimes, a company risks losing the trademark over which it fought entirely. Meet Figjam & Co., a catering business in Australia that threw something of a fit over an Aussie brewery, Burleigh Brewing, having a celebrated beer entitled "FIGJAM Pale Ale."

Figjam & Co owner Jason Davidson registered the trade name Figjam with IP Australia in 2005 before going on to establish a successful catering business that, among other things, provides beer, food and wine to weddings, parties and other functions. Mr Davidson’s Figjam trademark is registered for various goods and services including beer, fruit juices, syrups and other preparations for making beverages.

What should be immediately clear is that catering and brewing businesses are not competing with one another. It's also the case that including drinks in your catering business does not put you in the brewing beverages business, thus having trademarks registered to include goods such as beer and juices doesn't make much sense. That's not how those trademark designations are used. We'll get back into that again later, but first I want to share with you a quote from Mr. Davidson that I think perfectly sums up why this was a silly fight to start. Keep in mind that the aim of trademark law is to prevent customer confusion about the origin of a good or service and that that confusion is part of the test for infringement.

“I’m shocked to discover that Burleigh Brewing has been selling beer using my brand for more than five years,” Mr Davidson. “They would have sold millions of dollars of beer during that time under my trademark. This is a real warning to other small businesses.”

This quote can be accurately remixed as the following: "There was such a dearth of any confusion among my customers that I had no idea Burleigh Brewing even had a beer including the Figjam name for over half a decade. They've done a ton of business, millions of dollars even, and I have never even had a whiff of any confusion from my customers. Now I'd please like a ton of money."

That isn't the likely outcome of all of this, however. In response to being contacted about threatened litigation, Burleigh Brewing has decided to go on the offense.

Australian intellectual property law prohibits use of a trademark that is “substantially identical or deceptively similar” to another trade mark on the same or similar goods or services. A trademark can, however, be challenged on the basis it is not being used on the goods or services for which is it registered.

In the hope that it can obtain registration of the FIGJAM trademark, Burleigh Brewing has filed an application to remove Mr Davidson’s Figjam trademark.

Oops. In other words, Davidson poked the bear and now the bear is trying to invalidate his trademark (I may be losing the analogy in there somewhere). And all this, mind you, over something that was of so little consequence that it had gone unnoticed for several years. Nice job, all around.

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Filed Under: australia, brewery, figjam, trademark
Companies: figjam


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  1. icon
    TechDescartes (profile), 31 May 2017 @ 5:44pm

    FTFY

    Oops. In other words, Davidson poked the bear and now the bear is trying to invalidate his trademark (I may be losing the analogy in there somewhere).

    Poked the beer.

    link to this | view in thread ]

  2. icon
    Anonymous Anonymous Coward (profile), 31 May 2017 @ 5:53pm

    Re: FTFY

    Beer poking. Sounds like a candidate for a professional sport. Let all the amateur beer pokers get some practice in.

    link to this | view in thread ]

  3. icon
    Roger Strong (profile), 31 May 2017 @ 7:06pm

    Re: FTFY

    There's trouble bruin.

    link to this | view in thread ]

  4. identicon
    Anonymous Coward, 31 May 2017 @ 7:09pm

    Re: Re: FTFY

    Beer poking. Sounds like a candidate for a professional sport.

    You know the six most used words right before a fatal accident, right?

    "Hold my beer and watch this!"

    link to this | view in thread ]

  5. icon
    Roger Strong (profile), 31 May 2017 @ 7:39pm

    Re: Re: Re: FTFY

    Canada: I can't believe Toronto elected that crazy immature right-wing populist mayor Rob Ford! His antics are so insane that even the American press and late-night comedy shows won't stop talking about him.

    America: A Canadian mayor?

    America: Hold my beer....

    link to this | view in thread ]

  6. icon
    orbitalinsertion (profile), 31 May 2017 @ 7:49pm

    Re: Re: FTFY

    And thus began the rise of beer sold in plastic bags. Bag O' Beer. The beer poker's beer.

    link to this | view in thread ]

  7. icon
    orbitalinsertion (profile), 31 May 2017 @ 7:52pm

    The only confusion i have over this mark is why anyone would use or register it ever.

    (Yet another entirely content-free comment provided by yours truly.)

    link to this | view in thread ]

  8. identicon
    Anonymous Coward, 31 May 2017 @ 8:15pm

    Grandma makes a delicious FigJam

    from the fruit off her tree. It's a delight when she gives me bottles of it to eat.

    link to this | view in thread ]

  9. This comment has been flagged by the community. Click here to show it
  10. identicon
    Sambo, 31 May 2017 @ 10:11pm

    And another thing

    Can I also add that Burleigh Brewing Co have another even better named beer called "My Wifes Bitter".

    link to this | view in thread ]

  11. icon
    DannyB (profile), 1 Jun 2017 @ 6:04am

    Dear Figjam & Co.

    Dear Figjam & Co.,

    Try a new, more unique name for your catering business. Something like:

    Covfefe Catering

    link to this | view in thread ]

  12. icon
    John Mitchell (profile), 1 Jun 2017 @ 7:27am

    Re: Dear Figjam & Co.

    Indeed. They could still make a non-TM use of figjam even if they lost the mark:

    "Covfefe Catering - Make FigJam Great Again!"

    link to this | view in thread ]

  13. icon
    Craig Welch (profile), 1 Jun 2017 @ 12:58pm

    Re: And another thing

    No they don't.

    They have a beer called "My Wife's Bitter"

    link to this | view in thread ]


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