In the intellectual property world the shoey should be on the other foot!

Who would have thought that the act of a sports winner drinking from a shoe on the winner’s podium could become enmeshed in a trade mark tussle?

This is what’s happened to the Australian “shoey” winner’s ritual with the word now trade marked internationally by racing car giant Formula One Licensing while an Australian business has also now moved to trade mark it for certain items locally.

But Intellectual Property law expert Nicole Murdoch says while the registration of the trade mark won’t prevent people from drinking from a shoe, there’s now a question mark hanging over who can use the word on souvenir items.

Australian driver Daniel Ricciardo is well known for celebrating on the podium by drinking champagne from a shoe, but he didn’t invent the ritual and nor does he have a monopoly over its description- the Shoey.

Formula One Licensing trade marked ‘shoey’ last August and it’s now been registered in 21 countries including Australia, the United States, Germany, Italy, France, Russia and the United Kingdom.

Nicole Murdoch, a Director and Intellectual Property Practice Group Manager with Bennett & Philp Lawyers, says the trade mark move won’t stop anyone from drinking from a shoe in celebration, and people can still refer to that act as a ‘shoey’.

Formula One’s trade mark protects glassware and the like featuring the word ‘shoey’.

“So you could not brand glassware with the word  Shoey. No ‘shoey’ souvenir glasses unless F1 are selling them,” she says.

The registration is only for a category which covers flasks, glasses, bottles, mugs, sculptures and figurines.

Nicole says F1 reportedly also tried to get the trade mark for ‘shoey’ to cover clothing but had to back off in Australia due to an earlier registration for the word for clothing by Australian Korinne Harrington, a relative of the pair who coined the phrase.

However another player- the Australian Grand Prix Corporation registered in Melbourne – has now moved to register Shoey as its trade mark in seven classes. These include fridge magnets, jewellery, printed materials, bags, badges and games.

It’s not clear whether Formula 1 and the Australian Grand Prix Corporation are connected or have agreed to co-exist  but Nicole says if they don’t play well together, there could be a legal tug of war over the use of the “Shoey” trade mark here.

“The Shoey has been around in Australia for quite some years due to the surfing and fishing brand, The Mad Hueys. Its use has grown in popularity and Daniel Ricciardo has given it an international push,”

She says F1 won’t be able to stop rival organisations celebrating with a “shoey” ritual and the whole point of their trade marking move seemed to be about tying up the rights to use the word on glassware.

“The implications of the Australian Grand Prix Corporation trade mark application remain to be seen,” she says.

Authors

Tony Bennett is a Bennett & Philp Lawyers Founding Director and Chairman of the Board at Bennett & Philp Lawyers
Nicole Murdoch is a Director at Bennett & Philp Lawyers