Trade Practices – misleading and deceptive conduct – get-up and reputation
Brick Lane alleged that the respondents (Torquay, Better Beer Co Pty Ltd and Mighty Craft Ltd) had engaged in misleading or deceptive conduct under s 18 of the Australian Consumer Law (ACL) and misleading or false representations under ss 29(1)(g) and (h) of the ACL, based on the respondents’ promotion and sale of “Better Beer” branded beer and ginger beer in similar get-up to that used by Brick Lane for the promotion and sale of its “Sidewinder” beer. There was no passing-off claim, and there was no allegation of copying.
Justice Stewart held that the contraventions were not made out, despite finding distinct similarities in get-up, for the reasons set out below.
Background
From around September 2020, Brick Lane started to develop a new range of no- and low-alcohol beer to be known as the Sidewinder range. The Sidewinder range was launched by a media release on 21 July 2021, and is depicted first below. Five days later, on 26 July 2021, Mighty Craft announced to the ASX that it had partnered with Torquay and two comedians, known as the Inspired Unemployed, to form Better Beer Co and launch Better Beer. Better Beer was a full alcohol, low carbohydrate product. The announcement included an image of a can of Better Beer, depicted underneath. The content of the ASX announcement was republished in a number of industry publications, each of which displayed the Better Beer can. The reach of those articles was significant in the industry.
Up to and including 26 July 2021, there was very limited exposure of Brick Lane’s Sidewinder range get-up to consumers. There was a media release to 77 journalists, one article in Drinks Digest, a newly formed and barely followed Instagram account, and very few, if any, sales of the product. The product was essentially unavailable until 2 August. Beer consumers’ knowledge of the get-up and its features was minimal.
On 3 August 2021, Brick Lane started selling Sidewinder Hazy Pale.
In October 2021, Better Beer Co started selling the Better Beer lager in 355 ml cans. 330 ml bottles followed in mid-December 2021. There was a major Better Beer campaign in the middle of November 2021, and Better Beer quickly established itself in the market.
In December 2021, Brick Lane started promoting and selling a Sidewinder branded XPA Deluxe. The XPA Deluxe had the same packaging as the Sidewinder Hazy Pale, except for the name of the product and the colour of the stripes (which were orange and yellow).
By April 2022, the XPA Deluxe get-up had established something of a reputation amongst consumers of beer, although it was a very small player in the market and most consumers of beer were not likely to have encountered the XPA Deluxe get-up.
In April 2022, Better Beer Co started selling Better Beer ginger beer, which had the same get-up as the Better Beer lager, except that the blue stripe and lettering was replaced with a stripe and lettering in burnt orange or maroon.
The role of reputation
Justice Stewart reiterated that, for the purposes of determining whether a new product’s get-up is misleading or deceptive within the meaning of section 18 of the ACL, although it is not necessary to establish a particular reputation in an existing product, it is nevertheless necessary to establish some association in the mind of the relevant sector of the public between the applicant’s product and its get-up such that confusion might arise from the use of the same or a similar get-up in relation to the respondent’s product.
Without a pre-existing association, the use by the respondent of the same or a similar get-up will not suggest a misleading or deceptive association. Indeed, the inquiry does not assume that the hypothetical consumer member of the relevant class is familiar with the applicant’s product: that familiarity must be established. Stewart J reaffirmed that the claim must identify the features of the get-up that are known to the public.
This analysis of the law is consistent with Full Court authority, but it is very close to saying that an applicant cannot win without establishing a reputation in its product. Unless the relevant consumers are aware of the applicant’s get-up and associate it with the applicant or its product, the applicant will have no case.
The relevant date for assessing the allegedly wrongful conduct
Justice Stewart was required to determine the relevant date at which the assessment as to the impugned conduct being misleading or deceptive, or likely to mislead or deceive, should be undertaken.
Brick Lane submitted that the relevant date is the date on which the impugned products become available to consumers. The respondents submitted that the relevant date is the date on which the respondents’ impugned conduct commenced, being the promotion of their product. The difference was significant because the respondents launched the impugned Better Beer to the public just five days after the applicants did, but their Better Beer lager did not reach the market until two months after the applicant’s Sidewinder product. In that intervening period, Brick Lane’s reputation in its get-up increased considerably.
Justice Stewart held that Brick Lane’s submission was not supported by authority or logic. When a promotion precedes the availability of the promoted product for sale, the promotion can still be misleading or deceptive. Stewart J rejected the argument that conduct necessarily involves the sale, or availability for sale, of the competing product because there is no relevant harm to protect consumers against, observing that if the case were made out, Brick Lane would have been entitled to an injunction in relation to the promotion of any beers which were not yet available for sale. With respect, the authors agree.
Accordingly, Brick Lane needed to establish its reputation as at the date the Respondents first promoted their products, not the date of first sale. The relevant date for the Better Beer lager product was 26 July 2021 (the date of Mighty Craft’s ASX announcement) and for the Better Beer ginger beer product was April 2022.
The relevant class
Justice Stewart held that although the Sidewinder product (which were low- or no-alcohol) and the Better Beer product (which were low-carbohydrate) might be separate segments of the beer market, together they were part of a “health-conscious” segment. He held that it would be wrong to consider the case by identifying a hypothetical consumer in only one segment of the market, and that the relevant class of persons was purchasers of beer. The fact of the products being in different segments of the beer market was relevant to whether such consumers might be confused, but it did not affect the identification of the relevant class. Stewart J did not accept that the differences between alcoholic ginger beer and beer were material, given they were sold together.
The reasons Brick Lane failed
Brick Lane’s claim arising from the Sidewinder Hazy Pale Ale get-up failed because when Better Beer was first promoted there was no appreciable knowledge of the applicant’s Sidewinder get-up.
In relation to Sidewinder XPA Deluxe get-up which was said to be relevant to the Better Beer ginger beer, Justice Stewart found that by the time Better Beer ginger beer was launched, the common features of the Sidewinder get-up and the particular features of the Sidewinder XPA Deluxe get-up had developed a reputation such that the hypothetical consumer might be considered to have a familiarity with them. However, Stewart J also found that the hypothetical consumer would also have familiarity with the common features of the Better Beer lager get-up at that time. The hypothetical consumer’s familiarity with both get-ups had to be taken into account in considering any likelihood of confusion.
Justice Stewart found that each product had a distinctive brand name, rendered in very different typeface, which had no visual or phonetic similarities, and that the difference in the name of the product was significant. Although there were distinct similarities in get-ups, his Honour considered that the hypothetical reasonable consumer was likely to have to pay close attention when purchasing “precisely because of the huge variety in beers and the way in which they are presented” and so the “bewildering array” of options confirmed the “significance of a product’s name in identifying the product” notwithstanding the product was a fast moving consumer good (FMCG) at a relatively low price. Justice Stewart considered that, given the different names and the clarity of the statements on the packaging as to the nature of the products (low alcohol vs low carbohydrate), the possibility of a consumer choosing the wrong product was low.
This might be considered a divergence from earlier cases where the fact that the products were FMCGs meant consumers would pay less attention to branding and focus more on get-up. For example, in Sydneywide Distributors Pty Ltd v Red Bull Australia Pty Ltd (2002) 234 FCR 549 the applicant succeeded in a case based on similarities between the striking get-up of energy soft drinks, even though the respondent’s product bore its own distinct brand name “LiveWire”, in circumstances where, as the Full Court observed, the potential purchaser would “make his or her decision in a relatively short period of time”. Clearly, each market must be considered separately, and simply describing something as an FMCG does not determine how much attention a consumer will pay to the get-up.
Evidence of actual confusion
There was evidence of momentary confusion on the part of two individuals, which Stewart J attributed to the similarity of the products’ get-ups. However, as the cases make clear, evidence of actual confusion is rarely determinative and can only be used to support a finding that the relevant conduct is objectively misleading or deceptive, not to reach such a finding. In this case, His Honour held that the instances of confusion arose from “fleeting observation” and led, at most, to momentary confusion.