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Recent opposition proceedings brought by Patron Spirits International AG have been sent to Davy Jones’ Locker by a delegate of the Australian Trademarks Office.

In a decision handed down by the registrar’s delegate, Adrian Richards, the international premium spirit giant was unsuccessful in preventing Australian distillery and retail distributor, Fernbrew Pty Ltd, from registering the trademark THE PIRATE BAY RUM COMPANY for various alcoholic beverages in Class 33 (Patron Spirits International AG v Fernbew Pty Ltd ([2018] ATMO 87, 4 June 2018)).

The primary ground considered at the hearing was around the issue of deceptive similarity. Patron relied upon its prior trademark PYRAT (Registration No 886836) for “alcoholic beverages including distilled spirits; rum” also in Class 33.

Pop culture references

Evidence submitted by both sides drew on popular culture references spanning hundreds of years. In an effort to establish that 'pyrat' is a direct reference and in fact an alternative to 'pirate', Patron submitted evidence of the writings of the great English playwright William Shakespeare. The delegate was asked to consider excerpts from two versions of the widely celebrated work Hamlet - dated 1604 and 1623, respectively - where variations of the narrative loftily referred to both ‘pyrats’ and ‘pyrates’ being “Sre we were two dayes old at Sea”.

Other examples of the types of historical evidence Patron drew upon were dictionary excerpts from 1892 featuring the alternative ‘archaic’ spellings of 'pirate', 'pirat' and 'pyrat(e)'. Patron argued that this is a reflection of the language used during the height or the ‘golden age’ of piracy (roughly spanning 1650s to 1720s), the romantic or notorious concept of piracy that popular culture helps invoke in consumers’ conscious today. Patron’s intention was to establish the danger of confusion in the mind of consumers who would understand their brand to interchangeably read PIRATE in recollection, effectively attempting to broaden the monopoly that its PYRAT registration enjoyed.

The pirate and rum link

Both parties were intent on establishing that there is a direct conceptual link between pirates and the relevant goods, being rum. Patron also made use of examples of infamous fictional characters and their humorous taglines, ranging from "Yo-ho-ho and a bottle of rum!" being belted out by Treasure Island (1883)’s Long John Silver, to a contemporary example of Johnny Depp’s character Jack Sparrow’s unintelligible quips for "Why’s the rum gone?" in the Pirates of the Caribbean movie series.

Fernbrew used the perceived connection between rum and pirates to highlight that the long historical link of pirates to rum reduces the ability of the concept of pirates to be inherently distinctive with respect to the goods at hand, thereby placing more emphasis on the combined elements of 'Pirate Bay'. Fernbrew used examples of longstanding use by numerous rum merchants in the marketplace of pirate branding themes, such as "Brinley Gold Shipwreck, Rebellion Bay, Captain Morgan, El Dorado, Bundaberg Mutiny, Black Roberts, Calico Jack, Bounty, Illegal Tender and Newport". By doing so, Fernbrew looked to identify the possibility of harmonious co-existence and downplay any risk of confusion.

The legal consideration

While Patron’s evidence was arguably more animated, grog-soaked and scurvy-tainted than what is regularly put before the delegate, the question was ultimately one of law. Richards was not convinced of a real and tangible danger of confusion between the products after assessing the visual similarity as "virtually non-existent". Fernbrew’s mark, if shortened by an intoxicated bar customer or buccaneer, would be 'Pirate Bay', and was not in danger of receiving a much higher-priced shot of PYRAT-branded rum over the bar.

The extent of acquired reputation in Patron’s PYRAT mark was considered under Section 60 of the Trademarks Act 1995, which provides that a mark must not be registered if it is too similar to a mark with an acquired reputation in Australia because use of the mark would cause confusion. Patron focused on the high-end reputation of its product offerings and expensive price tags. While Richards acknowledged some of the evidence successfully led the brand’s esteem and high-end image, he found that the evidence was lacking and simply could not demonstrate the requisite reputation in Australia at the relevant date.

The anchor was dropped when Patron’s attempt to establish that the registration of the PIRATE BAY mark would be contrary to law under Section 42(b), by contravening sections of the Australian Consumer Law by misleading or deceiving the public in respect to the goods, was promptly dismissed. This test involves a higher threshold to establish deception than under Section 44 and Section 60 of the Trademarks Act, where Patron’s literary-filled evidence had already fallen short.

This article first appeared on WTR Daily, part of World Trademark Review, in (month/year). For further information, please go to www.worldtrademarkreview.com.

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