The test to be applied in assessing the extent to which a geographical term is inherently adapted to distinguish the designated goods is the same test that is applied to all trade marks. There is no separate test applicable to marks which may contain a geographical reference: Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (2010) 191 FCR 297 at [58].

Nevertheless, as a general rule, the names of countries, states, counties and large towns are not inherently adapted to distinguish.  For example:

(a)          GREAT WESTERN, in respect of still and sparkling wines: Thomson v B Seppelt & Sons Limited (1925) 37 CLR 305 (Knox CJ, Isaacs, Higgins, Rich and Starke JJ) (Thomson).

(b)          LIVERPOOL, in respect of electric cables: Re Liverpool Electric Cable Co Ltd’s Applications (1928) 46 RPC 99 (English Court of Appeal).

(c)          GLASTONBURY, in respect of sheepskin slippers: A Baily & Co Ltd v Clark, Son & Moreland [1938] AC 557 (House of Lords).

(d)          YORKSHIRE, in respect of solid drawn tubes and capillary fittings, all being made of copper or non-ferrous copper alloys: Yorkshire Copper Works Ltd’s Application (1953) 71 RPC 150 (House of Lords).

(e)          MICHIGAN, in respect of tractor shovels, front-end loaders, crawler-type and truck-mounted excavator cranes, power shovels and cranes, bulldozers, tractor dozers, tractor scrapers, tractor loggers, and accessories and attachments therefor: Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (Kitto J) (Clark Equipment).

(f)           OXFORD, in respect of recorded films, tapes, discs for reproducing information and printed publications: Chancellor, Masters and Scholars of the University of Oxford (t/as Oxford University Press) v Registrar of Trade Marks (1990) 24 FCR 1 (Lockhart, Jenkinson and Gummow JJ) (Oxford University Press).

(g)          OREGON, in respect of power tool accessories, in particular accessories for chainsaws: Blount v Registrar of Trade Marks (1998) 83 FCR 50 per Branson J at 60.

(h)          COLORADO, in respect of various goods including shoes, bags, wallets, purses and backpacks: Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506 (Colorado) per Allsop J at [128], Gyles J agreeing at [35], Kenny J agreeing at [29].

(i) PERSIAN FETTA, in respect of dairy products including cheese: Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (2010) 191 FCR 297 (Yarra Valley Dairy).

 

This is because geographic names form part of the common language that all traders should be entitled to use freely.  As explained by Lord Parker in Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624 and cited by Kitto J in Clark Equipment at CLR 514.

It is apparent from the history of trade marks in this country that both the Legislature and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Act a monopoly in what others may legitimately desire to use.”

In the first High Court case to consider the issue, Thomson, Rich J said at CLR 315: “I am always reluctant to grant anyone a monopoly in a geographical name.”

Lockhart J, in Oxford University Press said at 8:

It is a basic principle of trade mark law that no person should be able to monopolise a place name, because the effect of registration would be to impose an unreasonable restraint upon other traders who may legitimately wish to use that name in relation to their own goods or services.”

So, while words carrying geographic references require “specific attention” it is not the case that they can never be registrable.  “North Pole Bananas” is a hypothetical example repeated throughout the authorities of a mark carrying a geographic reference that is inherently adapted to distinguish.

In Yarra Valley Dairy, Middleton J said, at [66]:

“… the degree of association of the place with the goods may assist in determining where along the scale of inherent adaptability to distinguish a given mark lies. Even well known places such as “Sahara”, “Atlantic” or “North Pole” could be capable of distinguishing a variety of products if no reputation or association for the designated goods or services exists in relation to the relevant geographical area. Again, it will all depend upon context.”

Advertisements