Stewart J has dismissed Brick Lane’s ACL and passing off complaints against the get-up of Torquay Beverage Co’s Better Beers.
On July 21, 2021Brick Lane issued a press release announcing the launch of its new Sidewinders Hazy Pale ale, a no to low alcohol beer. The range had been in development, behind the scenes, since September or November 2020. Sales of the product to the public began around 2 August 2021 including in outlets such as Dan Murphy’s.
The domain name had been registered and and Instagram account created on 9 July 2021. From then on, the Instagram account, at least, featured an image of the Sidewinders product. Before 21 July 2021, however, there were only 9 followers (and they were likely from Brick Lane or otherwise associated with its development).
On July 26, 2021Mighty Craft announced to the ASX that it had partnered with Torquay Beverage Co and The Inspired Unemployed to form Better Beer Co and the launch of the new zero carb beer Better Beers. The announcement was picked up and widely reported in industry publications; one of which, Beers & Brewers had a “reach” of 13,000 people and another, Drinks Trade, some 27,000 people. It was not until late October 2021, however, that the product actually made it onto retail shelves.
There was no suggestion that the respondents had some how copied Brick Lane’s get-up.
On 3 December 2021, Brick Lane launched the second product in its Sidewinders range – an XPA Deluxe.
April 2021, Better Beers ginger ale was launched.
As is conventional, Brick Lane argued that the get-up of the respondents’ product was liable to misrepresent to the public that the product was Sidewinders or manufactured by or in some way endorsed, approved or sponsored by the manufacturer of Sidewinders.
The respective get-ups alleged:
|(1)||an off-white 355 ml can||(1)||an off-white 355 ml can (save for the bottled product)|
|(2)||an off-white cardboard cluster and case (where sold by cluster or case)||(2)||off-white cardboard cluster and case (where sold by cluster or case)|
|(3)||a curving flared striped design (on the can, cluster and case) in blue and shades of yellow and orange with the dominant flared part of the stripes being vertically aligned||(3)||a curving non-flared striped design (on the can, bottle, cluster and case) in blue and shades of orange and yellow with the stripes oriented horizontally; and|
|(4)||the use of horizontal black lettering for the Sidewinder name and horizontal off-white lettering against a black background for the name of the particular product on the can and case (the lettering, or background to the lettering, being silver on the cluster packaging); and||(4)||the use of dark blue lettering for the product name, the lettering being rotated vertically; and|
|(5)||the use of a sans serif typeface in upper case for the “Sidewinder” lettering.||(5)||the use of a serif typeface in title case for the “Better Beer” lettering.|
What went wrong
There were two main problems.
First, when the respondents started their conduct – the launch of their product a them 5 days after the launch of the Sidewinders products, Sidewinders itself did not have any appreciable reputation with the public. At Stewart J explained:
The first reason why Brick Lane’s claim in respect of the Sidewinder Hazy Pale product must fail is that at the relevant time, being 26 July 2021, there was no appreciable knowledge amongst members of the relevant class of the Sidewinder get-up. That is to say, the hypothetical member of the class of consumers purchasing beer is not likely to have any familiarity with the Sidewinder get-up with the result that on seeing the Better Beer get-up they would not be likely to confuse it with the Get-up sidewinder. As it was explained by Burley J in Homart FCA at , “it takes a strong case” to establish a reputation that the get-up relied on is associated with consumers with the relevant product. Put differently, even assuming a strong similarity in the respective get-ups, the hypothetical consumer is not likely to be misled or deceived into thinking that the two products are associated if they do not readily associate the applicant’s product’s get-up with the applicant or its product.
The position was different with the Better Beers ginger beer, launched later in April 2022. By then, however, both the Sidewinders and original Better Beers products had been widely promoted and distributed throughout the market so that the public must be taken to have learned to distinguish between them.
The second main reason Brick Lane failed was the strikingly different names prominently plastered over the products and their packaging. At Stewart J explained:
Turning now to the differences and similarities between the relevant products’ get-up, the first observation is that each product bears a distinctive brand name – Sidewinder and Better Beer. Not surprisingly, Mr. Hall’s evidence was that the Sidewinder brand name is distinctive, unique and powerful. There is no reason to disagree with that assessment notwithstanding that not everyone encountering the name may associate it with 70s jet boats – they may think of air-to-air missiles or snakes or something else equally distinctive and memorable. Equally, Better Beer is a distinctive brand name. Brick Lane submitted that because it is descriptive it is weak, but I do not accept that. It is alliterative and catchy. Moreover, Sidewinder and Better Beer are rendered in quite different styles of typeface – sans serif and serif respectively. They look and feel very different. They do not have visual or phonetic similarities such as were material to the reasoning in Homart FCA at 195(b).
As in Parkdale v Puxu, this difference was compelling in distinguishing the products.
His Honor accepted that there were distinct similarities between the relevant get-ups and did not put much store in the different orientation of the colored stripes or banding – vertical vs horizontal.
On the other hand, Stewart J did not think the size of the cans – 355ml instead of 375ml – had any significant role to play. Of the 894 different beers on offer at Dan Murphy’s, at least 50 used the 355ml can format so it could not be described as unusual.
Overall, Stewart J concluded at :
Taking all of the above matters into consideration, I am not satisfied that the hypothetical reasonable consumer of beer would at the relevant date have had any particular familiarity with Brick Lane’s Sidewinder get-up, but even if they did, they would not have been likely to be misled by the similarity of the respondents’ Better Beer get-up to the Sidewinder get-up into thinking that the product was in some way associated. As explained, that arises in particular from the distinctive names used for the different products as well as the differences between the get-ups and the features of the relevant market.
A couple of noteworthy points
As his Honor noted, the question whether there has been a contradiction of the ACL in these types of cases was determined when the respondent started the relevant conduct.
Brick Lane argued that the relevant date was when Better Beers was actually on the shelves available for retail purchases – that is, late in October 2021 – by which time Sidewinders was well established in the market.
Stewart J rejected that argument at  –  finding that the relevant date was when the respondents’ launched (ie, announced the launch of) their product. As his Honor pointed out, the promotion of a product could give rise to misleading associations regardless of whether the product was actually available for purchase. In the cases which focused on the date sales started, there was no suggestion that there had been advertising or promotion beforehand. On the other hand, in In-n-Out Burgers, the contravening conduct started (at  and ) when the respondent launched its Facebook page, not later when it opened its store. Correspondingly, the date Cadbury Schweppes started marketing its product in the Pub Squash case was accepted by the Privy Council as the relevant date in passing off.
Secondly, Stewart J sought to explain the role of reputation in an ACL case. Where conduct is directed to a class rather than specific individuals, case law has now established it is not necessary to establish that a substantial or not insubstantial number of that class is likely to be misled or deceived. It is only necessary to show that the ordinary or reasonable member of the class is likely to be mislead or deceived.
Stewart J considered that in this type of case it was still necessary to show some association in the mind of the public between the get-up and the applicant. After quoting the Full Court in Cadbury Schweppes v Darrell Lea at his Honor explained at :
… although it might be said that a particular reputation is not necessary, it is nonetheless 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.
In this case, the respondents had argued that the product was in a different market segment Sidewinders – the low carb segment vs the low alcohol segment, but Stewart J found the relevant public was the beer market generally. There was no evidence that the different “segments” operated as distinct (sub-)markets. For example, there is no evidence that beer products were arranged on retail shelves in any fashion by market segments.
Brick Lane sought to rely on a Trade Mark examiner’s rejection of Torquay’s trade mark application in the face of Brick Lane’s prior application. Stewart J pointed out at  that the competing applications did not feature their respective brand names. His Honor also doubted the examiner’s opinion was admissible evidence in a Court in light of Evidence Act s 76.
Finally, for those of you who recalled Lord McNaghten’s famous aphorism “thirsty people want beer, not explanations”, this case was distinguishable. In Lord Mcnaghten’s case, there had been one brewery in the town of Stone making and selling it stones Ales for hundreds of years when the competitor opened up as Stone Brewery selling Stone Ales. when Sidewinders and Better Beers launched into the market, however, the consumer was confronted with a plethora of brands and products.
Brick Lane Brewing Co Pty Ltd v Torquay Beverage Co Pty Ltd  FCA 66
- Australian Consumer Law s 18 and s 29(1)(g) & (h). ?
- A “craft beer accelerator” and the third respondent. The Inspired Unemployed and Torquay Beverage Co held, respectively, 40% and 60% of the shares in the second respondent, Better Beer Co Pty Ltd. ?
- Affirmed on appeal (without argument). ?
- Cadbury Schweppes Pty Ltd v Pub Squash Co Pty Ltd (1980) 2 NSWLR 851 at 861G. ?