IPONZ decision bad for New Zealand

IPONZ decision bad for New Zealand

Unjust decision by IPONZ favouring DB Breweries highlights urgent need to review appeal mechanisms*

New Zealand urgently needs an Australian type mechanism for the Commissioner of Trade Marks to initiate court action when patently unjust and misguided decisions are made by the Intellectual Property Office of New Zealand -- as in its recent decision to uphold DB Breweries’ trademark of the term ‘Radler’.

Intellectual property expert, Theodore Doucas of Zone IP, an intellectual property management consultancy in Wellington, says the IPONZ decision in favour of DB Breweries – on the grounds ‘Radler’ was not known as a descriptive term in New Zealand in 2004 -- is out of touch with reality.

Mr Doucas was commenting on IPONZ’s most recent decision not to revoke or invalidate DB Breweries trademark rights over the name, even though Radler is the generic term for a style of low alcohol beer, like Lager and Pilsner.

The appeal was brought in 2009 by the Society of Beer Advocates (Soba), after beer giant DB Breweries acted against Green Man Organic Brewery, for breaching its trademark in the use of the name 'Radler'. DB Breweries trademarked the name in 2004 after the launch of its Monteith's Radler.

“Radler is a style of beer and a common term all over the world. Once upon a time the term “Pinot Noir” was not known in New Zealand. What would have happened if that term had become a registered trade mark? People may as well now try to trademark common generic terms before they become well known, because that’s what IPONZ is in effect allowing.

“The real tragedy is it seems to the average person that unless you have massively deep pockets in New Zealand, there is no way to challenge this type of injustice. In Australia there is provision for the Registrar of Trade Marks to intervene where it is clearly in the public interest – we should have the same here in New Zealand,” Mr Doucas said.

He said the real test of distinctiveness for a trademark is not whether a mark is being used in New Zealand but the likelihood of use in New Zealand.

“IPONZ had the opportunity to make a decision which reflects the reality of the market at this present time and they have passed up this opportunity. It suggests that New Zealanders are undiscerning about the beer they consume and out of touch with the rest of the world.

“You cannot give somebody a monopoly like this and then think its good for business. This is bad for New Zealand, bad for business and bad for the consumer because it stifles competition.”

Mr Doucas called on DB Breweries to reconsider its position because the ‘Radler’ decision was fast turning into a public relations disaster for the company.

“They achieve nothing from this apart from the monopoly of a common term. I think they are being led into a public relations nightmare of negativity and bad press.

“The job of IPONZ is to protect business, not restrict legitimate trade and right now IPONZ is creating obstacles in trade that should not exist,” he said.

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