A RECENT EXAMPLE FROM AUSTRALIA

1
A RECENT EXAMPLE FROM AUSTRALIA

• Paul W. Reidl
• Law Office of Paul W. Reidl
• (formerly E. J. Gallo Winery)

2
BAREFOOT v. BAREFOOT

• PLAINTIFF

• DEFENDANT

3
INTERNATIONAL APPROACHES

• US market-oriented (Sailerbrau Franz Saitor, 23
  USPQ 2d 1719 (TTAB 1992))
• EU
• Other countries Class 32 v. Class 33

4
PLAINTIFFS ARGUMENT

• Progressive and market-oriented generally the
  same, interchangeable, overlapping Venn diagram
• Factors
• Both alcohol beverages
• Both fruit flavored
• Same stores
• Same promotional (internet, newspapers, in-store)
• Companies sell both
• Business plan targeted non-beer drinkers

5
DEFENDANTS ARGUMENT

• Focus on the traditional nature of beer no
  overlap at all
• Factors
• One is malt one is grape
• Deep beer tradition
• Different portions of stores
• Differences are recognized by alcohol beverage
  companies
• Wine people do not drink beer, and vica versa
• Different packaging
• Low of crossover
• Intent or plans are irrelevant objective
  controls

6
WHO WINS?

• PLAINTIFF?

• DEFENDANT?

7
TRIAL JUDGE

• Similarities They are both alcohol beverages,
  Lion Nathan intended to reach out to wine
  drinkers, companies make both wine and beer, sold
  in same stores.
• Differences They are made differently, they are
  sold in different parts of the stores, they are
  consumed differently, they are sold by different
  corporate divisions, intent is not very relevant.

8
TRIAL JUDGE DECISION

• THESE ARE VERY DIFFERENT GOODS AND CONFUSION IS
  UNLIKELY

9
APPELLATE PANEL

• THERE IS LITTLE ROOM FOR DOUBT
• THE CASE WAS CONVINCINGLY PROVEN

10
APPELLATE PANEL

• THESE ARE GOODS OF THE SAME GENERAL DESCRIPTION
• THE COURT ERRED BY FOCUSING ON THE DIFFERENCES,
  WHICH ARE OF MATERIALLY LESS SIGNIFICANCE.

11
WHATS THE TAKE-AWAY?

• Push the envelope be creative and
  market-oriented
• Be aware of the international differences in
  approaches
• Stay on message
• Defensive registrations for emerging products?
  Feasible in a down economy?