In the recent case of Patron Spirits International AG v Fernbrew Pty Ltd [2018] ATMO 87, two companies disagreed over whether their ‘pirate’ rum trade marks for alcoholic beverages were too similar and possibly misleading for consumers.
What happened?
In April 2016, Fernbrew Pty Ltd lodged a trade mark application for “The Pirate Bay Rum Company”. Patron Pty Ltd then contested the application, arguing that Pirate Bay Rum was deceptively similar to its own trademark “PYRAT” rum. Patron asserted that the Fernbrew’s trademark was likely to mislead consumers and breach Australian Consumer Law.
Patron claimed that Fernbrew’s use of the word “pirate” and the concept of “pirates and rum” made their two trade marks substantially the same. They pointed out that the affiliation between pirates and rum is found throughout pop culture and history as far back as Shakespeare’s 1604 version of Hamlet where “pyrat” appears as an older spelling of the word “pirate”. Patron mentioned the Pirates of the Caribbean franchise and Robert Louis Stevenson’s Treasure Island as further evidence of the link between pirates and rum. Patron argued this concept was also the basis for its reputation.
What did IP Australia decide?
IP Australia decided that while the words “pyrat” and “pirate” may be verbally similar, the Pirate Bay Rum trade mark was unlikely to mislead or deceive consumers as it was sufficiently different from the PYRAT mark both visually and with its phrasing. The hearing officer Adrian Richards stated that a visual comparison of the two trade marks showed that there was little, if any, resemblance between them. Richards also indicated that Patron’s PYRAT rum lacked a prominent brand image or “reputation” in the public eye as evidenced by a lack of advertising and limited sales. This made it unlikely consumers would be deceived or misled as to the difference between the two.
What does this mean for your business and registering trade marks?
This means that trade marks can plausibly have some similarities in wording or spelling. However, a key consideration is whether that similarity will be likely to mislead or deceive consumers. A range of factors is considered including the idea or the concept of the trade mark as a whole.
You can visit IP Australia’s website for information and useful tools about trade marks for your business.