La Sirène said it had not heard of Urban Alley’s products when it launched its Urban Pale branding and also suggested to the court that the trademark was already too similar to another older mark registered to the Urban Brewing Company.
Federal Court Justice Michael O’Bryan last week found it would not be in the public interest for the Urban Ale trademark to continue, observing the word “urban” had become a popular descriptor in craft beer circles, and other brands were likely to want to use it.
“I have found that the words ‘urban ale’ are words that other traders may desire to use in connection with beer products and breweries for their ordinary signification,” he wrote in his decision.
He found the Urban Ale trademark should be cancelled, agreeing it was “deceptively similar” to the older trademark for Urban Brewing Company.
Urban Alley’s claims of misleading conduct and its applications to cancel some of La Sirène’s trademarks were dismissed.
La Sirène co-founder Eva Nikias said it was a relief the brewery would not have to change its branding for its well-known urban pale product line.
“Our Farmhouse Style Urban Pale product has received such great recognition by the industry and is so well loved by our consumers, we are delighted that we don’t have to make any changes to the branding of such a successful product,” she said.
The company welcomed the recognition that the word “urban” was in common use in craft beer circles and that ownership of it was not held by one company.
“It’s a big win for the little guy, and a win for the right for all of us (in the industry) to be able to use the ordinary word urban in relation to beer,” Ms Nikias said.
Urban Alley was founded by Ze’ev Meltzer five years ago, but was acquired by Australian Hospitality Management in 2018. Mr Meltzer is no longer involved with the business.
Managing director of Australian Hospitality Management Dean Grant said the court ruling was regrettable but it would not affect Urban Alley’s strategy going forward.
“Legal issues are always complex and while we are disappointed with the decision, the trademark does not affect our operations,” he said.
“We will continue to trade with our Urban Ale as a key part of the offer.”
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Emma is the small business reporter for The Age and Sydney Morning Herald based in Melbourne.