Barefoot battle

Some of the younger generations out there might have heard of the beer ‘Barefoot Radler’. But I bet none have heard of a wine label called ‘Barefoot’. This sorry tale is a great example of the importance of registering your Intellectual Property (IP), and importantly, doing so in the
right category.

‘Barefoot’ was registered as a trademark by a wine company called E&J Gallo, however was only registered within the category associated with wine production and sales. When Lion Nathan released the ‘Barefoot Radler’ beer label, Gallo challenged it, saying they were breaching their trademark. Unfortunately for Gallo, they, or their trademark attorney, did not register the trademark within the beer category, so the judge found that there was no such breach – their protection only covered another competitor within the wine category. The judge also added that Gallo had failed to use the ‘Barefoot’ trademark since registering it in 2005, which further reinforced the decision.

Many businesses fail to understand the importance of the trademark, and why on earth you’d pay that little bit extra to register it in an additional category. If and when you get to this point in your businesses’ life, make sure you think far into the future when registering your categories. Do you ever plan to expand or branch into new areas? Do you plan to acquire or join with a new company? For that little bit extra, you could have the satisfaction of telling a big operator (like Lion Nathan) to back off because you had the business smarts to think ahead.

And, just as importantly, if you register a trademark, make a conscious effort to use it regularly. Ensure it is visible on signage, stationery, emails, and other correspondence. Keep it in the public domain. Just doing this could potentially save you a lot of money in court fees, and the costs of replacing your brand (which would effectively result in a loss of reputation and sales) that may arise when you are ruled to stop using a trademark, as happened to Gallo.

Thankfully, we spent years with our heads in books learning the ins and outs of marketing law, so you don’t have to! If you need some help or advice on IP, branding, ownership, copyright or any other relevant marketing law issues – contact me or any one of our team members at any time.