It’s the catchphrase sweeping the nation and now a popular craft beer brewery is facing off against the Warriors in a bid to own the trade mark for the term “Up The Wahs”.
Good George Brewing filed for the term in late August, and the New Zealand Warriors followed suit a little over a week later but its chief executive told the Herald he knew nothing about the brewery’s application.
Both applications are still under examination by the Intellectual Property Office of New Zealand (IPONZ) but a lawyer who specialises in trade marks and intellectual property thinks both could get what they want.
On August 23, Somerset Brewing Company, Good George’s legal trading name, filed the application with the hopes of using it for classes 32 and 33: beers; non-alcoholic drinks; fruit drinks; syrups and other preparations for making beverages, and alcoholic beverages (except beers) respectively.
Earlier this year, Good George brought out a bandwagon ‘Up the Wahs’ lager, with the first batch quickly selling out, and have since brewed another.
New Zealand Warriors filed an application for the term a little over a week later on September 1 for classes 25 (clothing, footwear, headgear), 28 (games and playthings; gymnastic and sporting articles), 32, 33, 35 (advertising, retail and business), and 41 (education and entertainment; sporting and cultural activities).
Warriors didn’t know
New Zealand Warriors chief executive Cameron George told the Herald he didn’t know about the Good George application.
“That’s not uncommon when people see different marketing things like this,” he said. “People will go and trade mark a lot of things so it’s not uncommon to have three or four different applications.
“At the end of the day, it’s just clearly an opportunity for us to associate those brands with our club which is exactly what it is. We’re just going through the process, I didn’t know anything about Good George.”
Good George director Jason Macklow told the Herald he too had “no idea” about the other application but would like to work with the Warriors.
“I had no idea that the Warriors had made an application for it, so it was totally news to me in that respect but it’s a hell of a cool term. The Warriors fans are a staunch, loyal sort of bunch and we’ve been blown away by the demand out of that product.
“We get on well with the Warriors guys ... at the end of the day, we’d be happy to give the application or the trade mark to the Warriors with the hopes of working with them on it.”
Good George first
Patent attorney AJ Park litigation and commercial head Paul Johns told the New Zealand Herald because Good George’s application was in first, it would be examined first and might well be accepted. “When it comes to the Warriors’ application IPONZ would most likely block the application, at least for classes 32 and 33, but the Warriors could seek to register the trade mark in the other classes.
“If you’re the Warriors, you’ll get an examination report saying, ‘look, there’s this earlier identical mark in class 33 and 32 so you can’t have it in those classes’. Their options are to delete classes 32 and 33 out of their own application and just proceed with the others or they can actually divide it up into two different applications: One covering the goods and services that aren’t being blocked and one covering the goods and services that are blocked and they’ll have to try and find a way to get that through, probably by opposing Good George’s application so it never becomes registered.”
Johns said the trade mark office would examine both applications to ensure they meet the regulatory requirements and were in the right form. In this case, he said it was likely the examiners would find some use of “Up the Wahs” but not by anyone using it as a trade mark.
“I suspect that the first application by Good George may well pass the examination and then it would be advertised in the Trade Mark Journal, which is online and gives formal notice to the world that the Intellectual Property Office intends to grant that trade mark.
Three months to oppose
“But there’s a window of three months in which someone can oppose that application. They do that by filing a formal notice with the office and then the applicant has the right to file evidence supporting its claim. The opponent gets the chance to file evidence in response to that explaining why it says it’s not entitled to registration. Each of those steps can take several months, and the whole opposition process tends to take at least a year.”
Without knowing what the positions of each party were, Johns said it was hard to say more but his message to other businesses was to get advice and be careful about adopting branding or slogans or images associated with other businesses without obtaining permission first.