It’s a point we apparently need to keep hammering home: for there to be trademark infringement, there must be simultaneous use of a validly held trademark in the same market and there must be real or potential customer confusion. Too often businesses throughout the world are under the impression that trademarks are far more broad than they actually are and that they can be used like a cudgel to smack change out of the pockets of other businesses, competing or otherwise. There are risks to this behavior, including a ding to the bully’s reputation, backlash from the public, and a loss of money spent on a legal action that need not have occurred.
And, sometimes, a company risks losing the trademark over which it fought entirely. Meet Figjam & Co., a catering business in Australia that threw something of a fit over an Aussie brewery, Burleigh Brewing, having a celebrated beer entitled “FIGJAM Pale Ale.”
Figjam & Co owner Jason Davidson registered the trade name Figjam with IP Australia in 2005 before going on to establish a successful catering business that, among other things, provides beer, food and wine to weddings, parties and other functions. Mr Davidson’s Figjam trademark is registered for various goods and services including beer, fruit juices, syrups and other preparations for making beverages.
What should be immediately clear is that catering and brewing businesses are not competing with one another. It’s also the case that including drinks in your catering business does not put you in the brewing beverages business, thus having trademarks registered to include goods such as beer and juices doesn’t make much sense. That’s not how those trademark designations are used. We’ll get back into that again later, but first I want to share with you a quote from Mr. Davidson that I think perfectly sums up why this was a silly fight to start. Keep in mind that the aim of trademark law is to prevent customer confusion about the origin of a good or service and that that confusion is part of the test for infringement.
“I’m shocked to discover that Burleigh Brewing has been selling beer using my brand for more than five years,” Mr Davidson. “They would have sold millions of dollars of beer during that time under my trademark. This is a real warning to other small businesses.”
This quote can be accurately remixed as the following: “There was such a dearth of any confusion among my customers that I had no idea Burleigh Brewing even had a beer including the Figjam name for over half a decade. They’ve done a ton of business, millions of dollars even, and I have never even had a whiff of any confusion from my customers. Now I’d please like a ton of money.”
That isn’t the likely outcome of all of this, however. In response to being contacted about threatened litigation, Burleigh Brewing has decided to go on the offense.
Australian intellectual property law prohibits use of a trademark that is “substantially identical or deceptively similar” to another trade mark on the same or similar goods or services. A trademark can, however, be challenged on the basis it is not being used on the goods or services for which is it registered.
In the hope that it can obtain registration of the FIGJAM trademark, Burleigh Brewing has filed an application to remove Mr Davidson’s Figjam trademark.
Oops. In other words, Davidson poked the bear and now the bear is trying to invalidate his trademark (I may be losing the analogy in there somewhere). And all this, mind you, over something that was of so little consequence that it had gone unnoticed for several years. Nice job, all around.