Quick hit:
The Federal Court has dismissed a lawsuit brought by Brick Lane Brewing against a rival brand Better Beer, finding that despite their “strikingly similar” packaging consumers were not likely to be confused between the two products.
The case is a useful reminder of some of the potential pitfalls when bringing claims based on similarities in product packaging (often referred to as “get-up” cases) – including the need to give proper credit to consumers’ ability to distinguish between products in a crowded market.
What happened?
On 21 July 2021, Brick Lane announced a new range of low-alcohol beers under the brand “Sidewinder”.
Just five days later Better Beer announced a range of low-carb beers under the brand “Better Beer”.
Both announcements included images of the first products in each range (a hazy pale ale from Sidewinder, and a lager from Better Beer):
Brick Lane started selling their Sidewinder hazy pale on 3 August 2021. Better Beer’s lager hit the market two months later in October 2021.
Later, in December 2021, Brick Lane brought a Sidewinder-branded XPA to market. This was followed in April 2022 by Better Beer launching a ginger beer:
Brick Lane’s head of brand and innovation was, perhaps unsurprisingly, “spewing”.
Brick Lane sued the respondents under the Australian Consumer Law, alleging that consumers would mistake the Better Beer products for the Sidewinder range, or they would think Better Beer had some association with or endorsement from the makers of Sidewinder.
What did the Court say?
The Federal Court rejected all of Brick Lane’s claims.
The evidence was that both companies had independently developed their product packaging long before the other’s announcement – so it could not be said that Better Beer had any intention to mislead consumers. Justice Stewart found that at the time Better Beer’s launch was announced there was essentially no public awareness of Sidewinder’s product, so consumers would not have been confused. His Honour concluded: “The happenstance of Brick Lane having won the race – a race that neither it nor the respondents knew that they were in – by only a few days does not give it the right to stop the respondents from using their get-up or to claim damages.”
The situation with the Better Beer ginger beer was different, because at that time the Sidewinder products had been on the market for several months and would have acquired some reputation amongst consumers.
Justice Stewart found that the packaging designs for the Sidewinder XPA and Better Beer ginger beer were “strikingly similar”. However, he went on to note that reasonable consumers of beer must be taken to take reasonable care of their own interests in a “crowded and bewildering” market.
In this context, consumers would not be misled – including because the brand names were very different and the different nature of the products (low-alcohol vs low-carb) was clearly specified on the packaging.
Why is this interesting?
This case emphasises that reputation is key to succeeding in a get-up case; similar packaging alone will not be enough. In general, consumers will only be misled if they treat the original packaging as designating trade origin, such that they are likely to be misled by similar packaging.
This differs from trade mark law, where reputation is generally irrelevant to deciding whether a registered trade mark has been infringed (recently confirmed by the High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8).
This case also suggests that in a crowded marketplace of products with so many different attributes (e.g. brand, variety, flavour, healthy options) it may be less likely that consumers will be confused by similar packaging design alone.
In general, this all serves as a reminder that while the ACL is frequently employed as a tool for brand protection, its underlying purpose remains the protection of consumers and potential claims should always be assessed through that lens.
What now?
With no sign of an appeal, it looks like both of these brands will remain on the market for now.
For more information about brand protection generally, contact Michelle Eadie. For more information about dispute resolution, contact Adam Simpson, Clare Young or Seb Tonkin.