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ARTICLE · 05 APRIL 2021

Urban Ale trade mark registration cancelled for descriptiveness

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This decision is a reminder of the limitations of adopting and registering trade marks with descriptive significance.

AustraliaIntellectual Property
Michelle Howe
Michelle Howe
Sean McManis
Sean McManis
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Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd [2020] FCAFC 186 (4 November 2020)

The Full Federal Court has upheld the primary judge's decision to cancel Urban Alley Brewery Pty Ltd's (Urban Alley) registration for "Urban Ale". The decision considers the issue of distinctiveness and highlights important lessons regarding the enforcement of trade marks which have descriptive significance, within the trade and relevant market.

Primary Decision

Urban Alley owned Registration No. 1775261 for the trade mark Urban Ale covering "beer" in Class 32 and dated 14 June 2016. Urban Alley sued La Sirène Pty Ltd (La Sirène) for use of the trade mark:

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(URBAN PALE label) on its beer product, launched in October 2016. Urban Alley also sought cancellation of La Sirène's registration for the URBAN PALE label.

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