Ye olde trade mark dispute: when a rose, is but a rose, just not that rose

The civil, genteel and room temperature world of English ale has been politely shaken to the core with claims of passing off, a tort most foul.  At stake is that most sacred of English cows – ale – fought out between two bespoke breweries, the old fashion way – in the England and Wales High Court.  According to the court:

“This is a case about Yorkshire pride, in more ways than one. The protagonists, Samuel Smith and Cropton Brewery, are two proud, small, independent Yorkshire breweries.” 

And before anyone could but raise an argument to the contrary, Mr Justice Arnold was quick to endear himself to the brewers of Yorkshire, offering:

“There is no dispute about the quality of their respective beers.”

It all stems, you see, from a rose.  For centuries, Samuel Smith Old Brewery (“Samuel Smith”) has been producing beers, the water being pumped, we are reliably informed by the court, from the same well dug in 1758 (though hopefully using different pipes).

“Samuel Smith prides itself on carrying on business in a traditional manner, utilising, where possible, the most traditional means of brewing its beers…the majority of Samuel Smith’s ales and stouts are fermented in fermenting vessels made of solid slabs of slate and the yeast used to ferment the ales has remained the same strain since the 19th century.”

In the 1960s, Samuel Smith had a trade mark designed and registered – a simple black and white rose which has since been used on its various labels and livery.  

As it turns out, the white rose is the emblem of Yorkshire county.  During the good old days of internecine warfare, the white rose was the emblem of the House of York during the War of the Roses; the successful Tudors eventually producing that great benefactor of convention and etiquette, Henry VIII.

Thus, Samuel Smith is not the only brewer in town who views the white rose as a good way of selling its beer.  Another local, smaller brewery, Cropton Brewery, also produces old style, hand-pumped beers, occasionally bottling them for retail.  The labels of two such beers would prove duel-worthy acts of insolence for Samuel Smith.  The first, Yorkshire Bitter, was produced exclusively for Marks and Spencers.  The second beer was Yorkshire Warrior, named after the local Yorkshire Regiment.  A proportion of the sales from this beer would be donated to the Yorkshire Regiment Benevolent Fund, a fund that supports ex-soldiers and their families.

In its defence, Cropton asserted that many other businesses used white roses in their livery.  Samuel Smith’s parry was that none of these businesses were actually brewing beer, and those that were had received incredibly polite “cease and desist letters”, and had decided, in accordance with the best of British manners, to in fact cease and desist. 

Based on the same concept that prevents Australian sparkling wine being called “champagne”, Cropton’s next argument was that as the white rose was a symbol of Yorkshire, other parties were permitted to use it to indicate the geographical origin of their goods – Samuel Smith could not monopolise the white rose.  This argument had merit.  The court found both parties chose the white rose intending that consumers would (correctly) assume the beers came from Yorkshire.

Acknowledging the “reasonable justification” that Cropton had for employing the white rose, the court was forced to get its hands dirty, drawing heavily on the bench’s obvious like for a good English rose:

“The white rose device on the Yorkshire Warrior label is in fact oriented differently to the Trade Mark, in the sense that it has two sepals pointing up and three down whereas the opposite is true of the Trade Mark … As for the white rose device on the Yorkshire Bitter label, this not only has a more smoothly circular design, but also the red accents are quite noticeable.”

The lack of verifiable customer confusion between the rose of Samuel Smith and that of Cropton would, in the end, prove Samuel Smith’s Guinevere.  Yes, the roses were similar, but there was no actual evidence of customer confusion. 

The lesson for picking a trademark is to find that sweet spot – something that resonates with the customers (particularly when you are trading on theme or concept), but enough novelty to warrant a monopoly.  Which has IP Whiteboard wondering – in a country sinking under pageantry and banners, can it really be that hard to find something unique to populate your stubby labels?  What about the proven methodology for naming pubs – one noun, and one adjective i.e. “The Runny Nose”, “The Blue Pear”?  Or, if all else fails, what about simply a shrubbery?

Buyer beware – today’s white rose becomes tomorrow’s black swan.

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