Rogue Society Gin forced to change its name to enter European market, amid trademark dispute

Left to right: Rogue Society Gin founders Daniel McLaughlin, Mark Neal and Richard Bourke. Photo / Jason Oxenham

Premium Kiwi gin company Rogue Society Gin has been forced to change its name in order to sell its products in Europe, and other markets.

The Canterbury-based company this month began trading as Scapegrace in New Zealand and Australia, after the European Union got in contact in 2015 to say it would not be able to sell its product as it already sold beer from a US company named Rogue Brewing.

To get around that it has been trading as Scapegrace for just under two years in a number of international markets, but recently changed its name Down Under. Scapegrace is the 18th century word for Rogue.

According to trademark rules, there cannot be two products in the same category that have similar names - even if the products are completely different.

Rogue Society co-founder Daniel McLaughlin said the situation was trying at the time but he was happy to now be trading under one name, globally.

"How it happened was we went to register our European trademark in 2015 after resolving a longstanding dispute with another company called Regal Rogue in Australia. But while we were sorting out this dispute in Australia, Rogue Brewing in Oregon, US, moved into spirits and registered trademarks for Europe, US, China and Japan.

"This meant neither of us could trade in these markets - we were both like 'bugger', and so we made the bold call to change our name," McLaughlin said.

"For us it was about good Kiwi spirit, adaptability and being authentic. We went into a bit of a hibernation of 'how do we create another brand that takes everything we've done and grows on it?' and spent about six months in a creative process searching through 2,000-odd names."

Scapegrace this month signed a national distribution deal in the US with Sazerac Company, one of America's largest distilling company.

Its product will be sold in 10 states with that company in June, including California, Texas and New York, and will roll out distribution to all 52 states in the coming years.

McLaughlin said it was important for businesses to ensure intellectual property was trademarked as soon as possible.

"To put it into perspective, we now have Scapegrace registered in 100 countries in two classes which covers all alcohol classes, so we own that word now," he said. "The world is such a big place and often when you're just starting out you don't always appreciate how large you can go."

Henderson Smith and Partners solicitor Peter Smith said it was common for small firms to find that a name or trademark which was protected in New Zealand was conflicted in other markets.

"In New Zealand we do not have a trade name registrar as they do In Australia, which means that New Zealand businesses are required to adopt more of a self-help regime," Smith said.

"International trademark applications for small business owners are not necessarily costly but the factors influencing cost include the number of territories being entered and the classes of protection being sought."

Smith said it was important to weigh the costs of promoting a new business against the cost of protecting a name if it fulfilled the registration requirements and the potential costs that might be incurred if a company infringed upon somebody else's rights.