Urban Alley Brewery Pty Ltd v La Sirene Pty Ltd

Urban Alley Brewery Pty Ltd brought a proceeding against La Sirène Pty Ltd in the Federal Court of Australia, alleging trade mark infringement, breach of sections 18 and 29 of the Australian Consumer Law (ACL) and passing off, as well as seeking rectification of the Register of Trade Marks. Urban Alley claimed that La Sirène had infringed its registered trade mark "Urban Ale" by using the name "Urban Pale" for its own craft beer product, which Urban Alley claimed was likely to cause confusion among consumers. Urban Alley also sought to cancel La Sirène’s trade marks for "Urban Pale". La Sirène defended the proceeding by arguing that its use of the name "Urban Pale" did not infringe Urban Alley’s trade mark, and that Urban Alley had no valid claim to ownership of the "Urban Ale" mark. La Sirène further applied for a declaration that Urban Alley’s threats to sue for trade mark infringement were groundless.

The court had to determine whether La Sirène’s use of the "Urban Pale" name constituted an infringement of Urban Alley’s "Urban Ale" trade mark, whether Urban Alley had a valid claim to ownership of the "Urban Ale" mark and whether the marks were substantially identical or deceptively similar. The court also needed to consider whether Urban Alley had acquired a reputation in its "Urban Ale" mark and whether La Sirène’s use of "Urban Pale" was likely to deceive or cause confusion among consumers. Finally, the court had to decide whether it should exercise its discretion under section 88(1)(a) of the Trade Marks Act 1995 (Cth) to order cancellation of Urban Alley’s "Urban Ale" mark.

The court found that La Sirène’s use of the "Urban Pale" name did not infringe Urban Alley’s "Urban Ale" trade mark, as the marks were not substantially identical or deceptively similar. The court also found that Urban Alley did not have a valid claim to ownership of the "Urban Ale" mark, as the mark was not capable of distinguishing the craft beer product sold by Urban Alley. The court further found that La Sirène’s use of "Urban Pale" was not likely to deceive or cause confusion among consumers. Accordingly, the court dismissed Urban Alley’s claims for trade mark infringement, breach of sections 18 and 29 of the ACL and passing off. The court also dismissed La Sirène’s application for declaratory relief under section 129(2)(a) of the Trade Marks Act, finding that Urban Alley’s threats to sue for trade mark infringement were not groundless. However, the court ordered that Urban Alley’s "Urban Ale" trade mark be cancelled, as it was not capable of distinguishing Urban Alley’s craft beer product.

The court ordered that the parties file, within 14 days, draft short minutes containing an agreed form of orders reflecting the reasons for decision of the Court (including as to the costs of the proceeding) or, in the absence of agreement, the parties file competing draft short minutes containing the orders proposed by each party and accompanying submissions in support of no more than 3 pages in length. Note: Entry of orders is dealt with in Rule 39.32 of the Federal Court Rules 2011.