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Thunder Road Toasts Success in "Pacific Ale" Case Again (Stone & Wood's Appeal Dismissed)

On 9 March 2018, Byron Bay brewery Stone & Wood lost an appeal in the Australian Full Federal Court of Appeal to Brunswick based brewer Thunder Road with respect to their respective uses of the word PACIFIC for their rival beers.

Stone & Wood sells craft beer, including its best-selling beer “Pacific Ale”. Thunder Road launched its “Thunder Road Pacific Ale” in 2015, which it renamed “Thunder Road Pacific” later that year following letters of demand from Stone & Wood.

In 2016, Stone & Wood’s claims against Thunder Road for misleading or deceptive conduct, false or misleading representations and for passing off were rejected by Justice Moshinsky as was Stone & Wood’s trade mark claim.

Stone & Wood appealed that decision on the grounds that the primary judge failed to recognise that the form of passing off that had occurred in this case was to an impression of an association between the Stone & Wood and Thunder Road products. Stone & Wood’s critical submission was that in January 2015, the only connotation of “Pacific Ale” or “Pacific” in the context of the craft beer market was an association with Stone & Wood or its Pacific Ale.  The trade mark claim was not pursued on appeal.

However, Chief Justice Allsop, and Justices Nicholas and Katzmann rejected each of the appeal grounds and found there was no error in the primary judge’s decision.

It is doubtful that this will be the end of this dispute. In separate proceedings in relation to Stone & Wood’s trade mark application for “Pacific Ale”, Thunder Road has appealed the Australian Trade Mark Office’s decision that it failed to establish either of its grounds of opposition to the trade mark. The Federal Court has listed the appeal to be heard in August 2018.

Copyright 2019 K & L Gates


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K&L Gates’ Intellectual Property Litigation practice is a sophisticated, worldwide enterprise with experience in all aspects of IP litigation. Our clients include those protecting emerging communications technologies, novel drug therapies, iconic brands, trade secrets, copyrights, and other proprietary information. Law360 named us a “Practice Group of the Year” for IP Law, and the National Law Journal named our practice to its “IP Hot List” of the top practices in the U.S. The NLJ said of K&L Gates, “Big firm. Big wins.”