About the author
Ben Gardiner is an Australian barrister specialising in intellectual property and trade practices law. He is primarily based in Brisbane but shares chambers in Melbourne as well.
For a full profile see the List G Barristers website.
For a list of recent cases in which Ben has appeared, see here.
About the name
OK, so North Pole Bananas is a weird name for a website about Trade Marks Law, right? Well, it’s not a weird name, it’s just a fancy name – and in Trade Marks Law, fancy names are good.
Way back in 1938, in the Glastonbury Case (1938) 55 RPC 253 (which was about slippers not the music festival), Lord Maugham said:
My Lords, I think it desirable to emphasise the fact that we are not here concerned with the registration of a geographical name selected by the proprietor of the goods in such circumstances that it is in effect a fancy name. For instance, as was suggested by counsel for the respondents in his able argument, such a trade mark as the words “North Pole” in connection with bananas would be the use of a geographical name dislocated, or disconnected, from the origin of the goods. A number of other illustrations, perhaps not happier than that one, can plainly be given.
The point is that, as a general rule, geographical names are not registrable as trade marks because other traders might legitimately want to use those names in connection with their own goods or services. There are lots of examples of such trade marks that have been held to be invalid: GREAT WESTERN, LIVERPOOL, YORKSHIRE, MICHIGAN, OXFORD, OREGON, COLORADO, PERSIAN FETTA.
But this rule does not apply for geographic names that are “dislocated, or disconnected, from the origin of the goods.” So, North Pole would be registrable for bananas.
The Glastonbury Case has been cited many times by Australian courts for this point (including twice by the High Court – in Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 and Cantarella Bros Pty Ltd v Modena Trading Pty Ltd (2014) 315 ALR 4.
The counsel in the Glastonbury Case that made this “able argument” (though not so able that he saved his client’s mark) was Trevor Watson KC, one of the UK’s most respected barristers in patent law at the time. Watson had been a physicist in Oxford before being called to the Bar by Gray’s Inn where he apparently took “all the prizes that were to be had”. (See his obituary in Nature here).
There was a connection to Australia as well. In 1935, Watson was led by Robert Menzies KC (then Australia’s Attorney-General and later to become its longest serving Prime Minister) for the appellants in Paper Sacks Ltd v Cowper (1935) 53 RPC 31 before the Privy Council. They successfully argued that a patent relating to the manufacture of paper bags was invalid for lack of novelty.