The plaintiff sold a brand of beer called MONTEITH’S SUMMER ALE which it had first brewed in 1998 as a special beer and then introduced each year as a limited release beer over the summer period. Mac’s Brewery, owned by Lion Nathan Limited, had its own range of MAC’S beers and was about to launch a MAC’S SUNDANCE SUMMER ALE. 

DB objected to the use of the term “summer ale”. Relying on passing off and breach of s9 of the Fair Trading Act, DB sought an interlocutory injunction to restrain the launch of MAC’S SUNDANCE SUMMER ALE.

The packaging of the plaintiff’s and defendant’s products was quite different and Harrison J found that the impressions created by the packaging or labels were central. In his judgment it was unarguable that the defendant was representing the existence of any association or relationship between the brands. 

The plaintiff’s case was argued on the basis that there would be confusion in situations where customers would not see the product labelling before the orders were fulfilled - for example:

• in a bar.
• when a customer asked for Summer Ale in a supermarket and was directed to MAC’S SUNDANCE SUMMER ALE.
• where there was a liquor retailer placing an order over the telephone for Summer Ale and was supplied with MAC’S SUNDANCE SUMMER ALE.

Harrison J regarded the existence of these possibilities as relatively minor and strained. 

DB sought also to make a more subtle argument - that by using the name “summer ale” on its labels, Lion was appropriating or trading off the goodwill in MONTEITH’S SUMMER ALE “the subtle rapier of suggestion”: Hogan v Koala Dundee Pty Limited (1988) 12 IPR 508.

Harrison J was not persuaded. He held that the phrase “summer ale” did not originate with the plaintiff but was a generic term applied to a sweet refreshing type of beer which was specially batch brewed for summer. It first became popular in the United Kingdom and was adopted by Monteith’s in 1998. He noted too the plaintiff’s inevitable concession that DB could not complain if Lion had used the phrase “summer beer”.

An injunction was refused. Harrison J held that a claim for passing could not be sustained solely on a descriptive or generic term where there was no proof of an exclusive or secondary reputation and/or a misrepresentation arising from labelling or packaging getup. The Court held that there was “no justification in policy or principle for providing [the plaintiff] with what was in effect a monopolistic or quasi monopolistic right equivalent to the protection of a trade mark in such a descriptive term: Cellular Clothing Co Limited v Maxton Murray [1899] AC 326, 329.