Intellectual property lawyer Theodore Doucas says 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.
In a statement, Mr Doucas, of Wellington firm Zone Law, has said 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.
"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," he says.
"It is important that public opinion and perception is factored into intellectual property advice and strategy."
Mr Doucas says the Tuatara example can be compared to a similar case where DB Breweries registered the term "radler" in spite of 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." he says.
"Even though the public opinion was against DB at that time, it was too late as they had already registered the mark."
Mr Doucas says Tuatara however provoked outrage when it attempted to register the trademark "amarillo" because it is a common type of hop variety used in beer. Its other attempt to trademark "kapai", which is used by a similar brewery, was seen as bullying by many. He says Tuatara quickly withdrew its applications "as a result of instant social media attention".
"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 says.