How best to brand when you have developed not just a new product but a new kind of product

Being an innovator often results in developing not just a new product but a whole new kind of product: one that defies description. When no one has ever seen one before, it needs a name.

The recent decision in Urban Alley Brewery Pty Ltd v La Sirene Pty Ltd [2020] FCA 82 demonstrates that it is ideal for innovators to introduce their new kind of product to the market with:

a) their own brand name for the new kind of product innovation; and
b) a generic name to describe the product innovation for everyone to use.

The choice of names on a label, together with the way in which they are presented, are important influences for how competitors and consumers perceive a new product. They can determine whether an innovator succeeds in owning and protecting its chosen branding.

A case of beer

In the case of the Urban Alley Brewery, this brewery worked on introducing a new line of beer, described in its marketing as “somewhere between a classic Australian golden ale and a Belgian blonde”. It initially referred to this new style of beer as an “Urban Ale” and promoted it under the trade mark Once Bitter. It appears this brewery’s intention at launch was to use the Once Bitter trade mark as a parent brand and for Urban Ale to function as a sub-brand. However, in the absence of a generic name to describe this new style of beer there was always a risk that Urban Ale would be understood as a descriptor.

The brewery subsequently reconsidered using the word “bitter” in its branding because it risked consumers thinking the beer had an accentuated bitter taste, which it did not. The brewery removed the Once Bitter trade mark from the labelling and sought to elevate Urban Ale in its place.

The brewery’s efforts to maintain rights in Urban Ale as a trade mark were unsuccessful because of a combination of:

i) the ordinary signification of the word urban in the context of beer at the time of adoption of Urban Ale by the brewery; and
ii) its use of Urban Ale in a subsidiary manner.

In the absence of proffering a generic name for the new line of beer it had created, the name Urban Ale filled this void and could not later be enforced as a brand name specific to the brewery.

Tips and tricks

A trade mark should always be used as an adjective and not as a noun. This applies regardless of the product in question. However, when a product is the first of its kind there may be no noun yet to describe it.

To achieve brand recognition, an innovator should therefore provide the public with not only a brand name, but also a new term to be the generic descriptor for the product. Otherwise, the brand name may become the generic term by default.

There are many successful examples of innovative products with a brand name and a separate term to describe it. At any weekend picnic there may be ESKY portable ice boxes, food wrapped in ALFOIL aluminium foil or stored in TUPPERWARE plastic storage containers, hot beverages in THERMOS insulated flasks, HEAT BEADS solid fuel for the barbeque, and people playing with a FRISBEE toy flying disc.

The term Urban Ale is not among these successful trade marks because the brewery never succeeded in imbuing significance to the word “urban” as a beer style or flavour characteristic specific to it, as initially intended. At the time of adopting the name Urban Ale, the word “urban” in the context of beer in Australia was already a generic term used to describe the location of a brewery or its target audience. It remained so. The use made by the brewery of the name Urban Ale did nothing to displace this meaning.

Choosing a distinctive brand name assists to secure and maintain strong trade mark registration rights. Clearance searches conducted ahead of committing to a new brand name can assist to identify problematic choices. An informed decision can be made following a clearance search either to pursue an alternate brand name where there is no or little prospect for achieving a strong registration, or to form a strategy to assist acceptance and registration for a problematic choice that has the potential to succeed with effort. Brand names with some descriptive element may acquire distinctiveness if used appropriately.

In considering product packaging as a totality and whether a name is functioning as a trade mark, the following are factors to utilise:

  • positioning the name prominently on the label and in marketing
  • graphically representing the name in a particular font
  • graphically representing the name in a particular colour graphically representing the name in lettering that is larger than surrounding material
  • providing a generic description in a subsidiary script different and separate to the name

Active steps taken to educate competitors and consumers that a term is specific to an innovator can assist to achieve branding rights in the new term.

Adams Pluck can assist with clearance searches and branding strategies to secure rights in new brands for new products and new kinds of products. Please contact us for a confidential consultation.