Can a geographical name be used as a trade mark?

As a general rule, marks containing or referring to the geographical origin of a product are not registrable as a trade mark.

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 from having a monopoly over a location thus, preventing consumers from being influenced by, or associating a service and/or product to the location in a favourable manor. It is considered that these marks should remain available as it is in the public’s best interest to do so – this is commonly known as the “need to keep free principle”.

While the law surrounding what can and cannot be registered as a trade mark is seemingly clear, recent times have shown us that in some instances, marks with geographical indications can in fact gain trade mark protection if the application meets one of two exceptions.

The first is where a geographical name through use has become associated with a particular product and has therefore acquired ‘distinctive character’, for example ‘Bordeaux wine’. In such circumstances, it is sufficient to register a geographical name, where that character serves to identify goods emanating exclusively from a particular company.

The second exception relates to association. This is where there is no association between the proposed mark and geographical location. In order to satisfy the requirement that no association between the mark and name can exist, it is enough if in the mind of the average consumer no association exists – see Canary Wharf Group Plc v Comptroller General of Patents, Designs and Trade Marks [2015] EWHC 1588 (Ch).

While the exceptions may give hope to some, the hurdle of evidencing that the mark has been used for a period of time in addition to evidencing consumer recognition could be both a lengthy and challenging process.

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