April 18, 2021

Say It With Me Now, Australia: Beer And Wine Are Not The Same Thing, Not Even For Trademarks

By Timothy Geigner
While I’ve done a fair share of posts here on the topic of trademarks and the alcohol industries, one of the most frustrating sub-types for those posts is the sort where the dispute exists between one wine maker and one brewery. There appears to be some misconception that alcohol is one big market or industry for the purposes of trademark. While it is true that far too few countries explicitly recognize that wine and beer are different markets in their trademark laws, most of the countries do still have customer confusion as a key test for infringement. And, I feel it’s safe to say, the general public can tell the difference between beer and wine, and typically know enough about each’s crafters to tell their branding apart.

Now the general public in Australia is facing this test in a way, with a large liquor chain trying to oppose the trademark application for a craft beer gift service over a wine trademark it holds, but doesn’t seem to be using.

The Beer Drop was officially launched in October 2019, with founder Evan Reitano filing to register its trademark in June 2019.

In January this year Coles opposed the trademark, saying it was “contrary to law” as it had substantially identical or deceptively similar trademarks – in this case, ‘Wine Drop’ which is currently not in use, and whose web page redirects to First Choice.

“Our Wine Drop subscription service was a popular service for our First Choice customers and the www.winedrop.com.au website currently redirects customers to the First Choice Liquor webpage,” a Coles representative told Brews News.

This appears to be as close to an admission that a trademark is no longer in use as one could hope for. “Was” a popular service. The website redirects to a different branded page. And that’s all before we get to the simple fact that wine and beer are not the same thing. Add to that that the word “drop” isn’t particularly source identifying and you begin to wonder how there’s a case to be made by Coles at all. And then we can add to all of that my suspicion that the Australian public can probably discern between a big retailer and a startup craft beer gift service. With that, this all begins to look silly.

It looks as though Beer Drop will be focusing on Coles’ failure to use the trademark, however, rather than beer and wine being distinct markets.

Reitano undertook a small business course before launching The Beer Drop and said it was invaluable to his IP experience so far, but what really stung was the references to ‘bad faith’”, he said.

“I read over it and I laughed it off at first, I had never heard of the Wine Drop, the first thing I did was jump onto Google. Being a Coles Liquor business you’d think it would be in the top one or two search hits which it wasn’t, and I can’t find any trace of it. It’s strange because they’ve said in their opposition that they’ve built a reputation with that brand, it feels like they expected me to read it and say shit, it’s Coles Liquor, let’s back off.”

Part of the reason for that may have been that Reitano worked for another Coles liquor brand in his past. Some folks have claimed that, since he worked for a Coles brand, he must have known about the Wine Drop trademark. That is obviously silly. Expecting a line employee to know about every trademark a company is no longer using is insane. And it’s also entirely besides the point because, again, this all ultimately boils down to the potential for customer confusion and here there is none.

Source:: https://www.techdirt.com/articles/20200512/10183544485/say-it-with-me-now-australia-beer-wine-are-not-same-thing-not-even-trademarks.shtml