You want to register a geographical trade mark? - We know how!
As a general rule, geographical locations cannot be registered as a trade mark.
This is to prevent any monopolies being created over locations that should be free for all to use.
This principle is found as part of the Absolute Grounds for Refusal. These can be found in Section 3 of the Trade Marks Act 1994. Geographical locations are specifically prohibited in section 3 (1)(c) which states “trade marks which consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin, the time of production of goods or of rendering of services, or other characteristics of goods or services” cannot be registered.
However, all is not lost.
Following a case in the Court of Justice for the European Union that has slipped under the radar, geographical locations can be part of a trade mark.
In Windsurfing Chiemsee Produktions- und Vertriebs GmbH v Boots- und Segelzubehor Walter Huber (C-108/97), the court gave a preliminary ruling on a case where a company wanted ‘chiemsee’ registered for water sports. Chiemsee is a lake in Bavaria. A rival sports clothing retailer had objected to the application.
The CJEU ruled that, in normal cases the mark would be refused due to its geographical nature; however there is an exception to this rule. As a geographical name is seen as descriptive, if a mark can gain distinctiveness through use then it can be registered. The mark would have had to be used over a pro-longed period and the parties would have to provide evidence that the use has made the mark distinctive and there is sufficient customer recognition in relation to the mark’s connection with the company.
Of course this is not a guaranteed way for registering a geographical location but it can be a glimmer of hope to anyone whose brand includes a location but have built its own reputation.
For more information, contact The Trademarkroom.
By Ellis Sweetenham