Geographical trade marks

Posted by TMR on September 08, 2019 / Posted in Trade Marks
In accordance to UK trade mark law, marks containing geographical terms are not registrable.


In accordance to UK trade mark law, marks containing geographical terms are not registrable.

Section 3(1)(c) of the Trade Mark Act provides that “any sign, 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 will be refused registration”.

The rationale for this condition is to prevent applicants in having a monopoly over a location and as such, prevent consumers from being influenced by, or associating a service and/or product to the location in a favorable manor. It is considered that these geographical marks should remain available as it is in the publics interest. This is commonly known as the “need to keep free principle”.

There are two exceptions to this rule however which could make way for a successful application.

The first exception is whereby a mark can evidence use by consumers which has created an association with those goods, for example ‘Bordeaux wine’. This exception is also recognised as ‘proving acquired distinctiveness’. As such, if a mark can prove acquired distinctiveness, it may be deemed registerable. Although this could be hope for some, the hurdle of evidencing that the mark has been used for a lengthy period of time along with proving customer recognition could be a challenging process.

The second exception relates to distinctive character. This means a mark which includes a geographical origin may be registerable on the basis that there is no association between the mark and the geographical term. For example, “Montblanc” for pens. In the instance there is no link between the product and/or service with the term, the examiner will asses whether any average consumer may be capable of associating the mark with the location in question. If this requirement can be satisfied, the mark will be exempt from section 3(1)(c) and consequently may be deemed registerable. See Canary Wharf Group Plc v Comptroller General of Patents, Designs and Trade Marks [2015] EWHC 1588 (Ch).

Therefore as a general rule, in the instance a trade mark is filed that includes a geographical term and fails to evidence acquired distinctiveness or character, it is highly likely that the application will be refused.

If you have any questions relating to trade marks, contact the Trademark room today where we would be happy to assist you!

 

By Sena Tokel

TMR TMR
This entry was posted on September 08, 2019 and is filed under Trade Marks. You can follow our blog through the RSS 2.0 feed.

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