PRESS RELEASE
Zone Law and Zone IP
16 November 2016
Tuatara stoush demonstrates court of public opinion is NZ's highest court
The recent social media backlash against attempts by brewer Tuatara to trademark the terms 'kapai' and 'amarillo'
demonstrates that some IP law firms may be out of step with the fact that public opinion can be more powerful than the
courts.
Intellectual property expert and lawyer, Theodore Doucas of Zone Law and Zone IP, an intellectual property law firm and consultancy in Auckland and Wellington, said today there is an urgent need for
law firms and business decision makers to recognise that social nuances and popular culture must be factored into a
legal strategy.
"Tuatara quickly backed down following a social media backlash. While the courts can pass judgement, the consequences of
angering the public can often be far more serious. Some legal advisers can be oblivious to this.
"It is important that public opinion and perception is factored into intellectual property advice and strategy."
Mr Doucas drew a comparison to a similar case when DB Breweries registered the term 'radler', despite the fact that it
is a generic term for a style of low alcohol beer.
DB initially obtained the trademark because 'radler' was not known as a descriptive term in New Zealand in 2003. The
application went virtually unnoticed through the system. By the time an appeal was launched in 2009 after beer giant DB
stopped Green Man Organic Brewery from using the name 'radler', the mark had already been registered for a number of
years. The registration was therefore upheld. Even though the public opinion was against DB at that time, it was too
late as they had already registered the mark.
In the recent Tuatara example, the brewery copped outrage at its attempt to register the trademark 'amarillo' because it
is a common hop variety used in beer. The brewery's other attempt to trademark 'kapai', which is used by a smaller
brewery, was perceived as bullying by many and as a result of instant social media attention, Tuatara quickly withdrew
its applications.
"The difference between the DB example and the Tuatara example is that social media was not as prevalent in 2003 when
the Radler mark was registered as it is now, and people were not nearly as ready to express themselves as they are
today.
"I believe that social media has changed the way that companies should approach trademarks. Stealth is no longer an
option and law firms that discount public opinion are doing their clients a disservice.
"It is antiquated thinking to say that the courts will have the final say," Mr Doucas said.
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About Zone IP and Zone Law
ZONE LAW is an intellectual property law firm providing legal advice in intellectual property and business matters. ZONE IP is an intellectual property consultancy providing commercial advice in trade marks, copyright and branding.