IP attorneys are now required to search more broadly than before when checking to ensure a trademark is available for use, following a High Court case involving brewer Lion Nathan.

The government agency responsible for trademarks and patents, IP Australia, has recently changed the guidance for lawyers and attorneys, advising them that goods which could be considered related by the general public need to be included in a registered trade mark search.

The changes follow the High Court ruling that beer and wine should be considered as a single category of product when companies are applying for a trademark. Partner at FB Rice &Co, Joanne Martin, said the nature of the business landscape had changed to the extent where goods which are similar have to be included in the same group when looking at trademarks. “In the past we would not have raised a beer mark as an objection when looking at launching a wine mark of the same name,” she said. “What the trademarks office has done is gone back to its manual and said we now have to broaden our search parameters.”

The change in instruction comes following a case between Lion Nathan and US wine company E&J Gallo, over the trademark “Barefoot”. Lion Nathan launched a beer called Barefoot Radler in Australia in 2008, while E&J Gallo owns a winery called Barefoot Wines. Despite the wine not being sold in Australia by E&J Gallo, the court ruled the wine company had the right to the name. “The courts are recognising that the nature of our market, with global organisations becoming more diversified, has changed and the public’s awareness of this creates more similarities between products than was traditionally the case,” said Martin.

For legal practitioners the other challenge this case has highlighted is the period companies have to use a trademark after it is registered, said Martin. “For an overseas company to get their product into the market place, five years is not a long time.” Gallo had commenced dealings with Australian firm McWilliam’s Wines in 2007/08 (prior to the Barfoot Radler launch) but the court said preparation was not good enough to ensure ownership of the trademark. “This is perhaps an area in which we are going to need to see some changes, because it can be a long process for companies looking to launch a product in Australia,” Martin added. 

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