Australia: Giving Unauthorised Traders A Red Card: The Registration And Enforcement Of Geographical Names As Trade Marks

Last Updated: 4 June 2003
Article by Caroline Baker

Trade mark registries have traditionally approached the registration of geographical names with caution. This caution stemmed from the concern that the grant of a monopoly over a geographical name may unfairly restrict the ability of other traders in the territory to refer to the geographical name in relation to their goods or services.

In the United Kingdom - TOTTENHAM
Tottenham is an urban area located in the London Borough of Haringey. This geographical name has been registered as a trade mark in the United Kingdom by Tottenham Hotspur pLC.

In accepting TOTTENHAM for registration, the Trade Marks Officer applied a two part test:

  • if consumers currently associate the category of goods for which trade mark registration is sought with the place

(and not the party applying to register the name), it will be refused for registration, and

  • if consumers do not currently associate the place with the goods or services, but it is reasonable to assume that such an association may be made in future, the geographical name will be refused for registration.

So, if the goods or services are exclusively associated with the party applying to register the name as a trade mark, and that name is not regarded (nor likely to become regarded) as an indicator of the place where the goods or services are sold or provided, the name will be registrable as a trade mark.

In deciding that TOTTENHAM was not currently seen, nor likely to be seen in future, as an indicator of geographical origin, but was more likely to be associated with the Tottenham Hotspur Football Club, the Trade Marks Officer found that:

  • there was no evidence that Tottenham is a large commercial or industrial centre
  • the larger an area, by population or size, the more likely that its name might be seen in the future as being an indicator of geographical origin
  • it is more difficult for an enclosed urban area to change the nature of its economy than for a green field area, and
  • because Tottenham boundaries are defined and it cannot expand in size, it is unlikely that Tottenham will change the nature of its economy and, for example, become a supplier of natural resources.

The Trade Marks Officer's decision was confirmed on appeal.

In Australia
Essentially, the same considerations apply to registration of a geographical name as a trade mark in Australia.

If: (a) a geographical name has an obvious or potential connection with the goods or services, or
(b) is an area of primary production,
an applicant for registration of a geographical name is required to file evidence of its use of the trade mark showing that, at the date the application was filed, the geographical name was exclusively associated with its goods or services.
If the geographical name does not have an obvious or potential connection with the goods or services, or is not an area of primary production, the evidence required to support the application will be less onerous.

Whether a geographical name has a potential connection with the goods or services is determined by reference to the test applied by Justice Gummow in Oxford University Press v Registrar of Trade Marks 17 IPR 509:
'if it is reasonable to suppose that such goods in the future will be produced there, other traders will have a legitimate
interest in using the geographical name to identify their goods.'

This mirrors the test applied in the United Kingdom.

In the United Kingdom - ARSENAL
Although geographical names are still registered with caution, registration should arm the trade mark owner with a tool to tackle traders who rely on the goodwill the owner has in the name to sell unauthorised goods. The use of protected trade marks by unauthorised dealers is particularly evident in the sporting arena where the sale of sports teams' merchandise is big business.

Trade marks owners have, however, had some difficulty enforcing their rights in geographical names. In action taken by Arsenal Football Club against Matthew Reed for infringement of its registrations for ARSENAL, Mr Reed claimed he used ARSENAL not to indicate trade origin but, as a badge of allegiance to the football club. The distinction may be slight, but so far it has prevented Arsenal Football Club from stopping Mr Reed's use of ARSENAL.

Unauthorised use of a trade mark by a person to indicate trade origin is use as a trade mark and constitutes trade mark infringement. Justice Laddie found that Mr Reed's use of ARSENAL, perceived as a badge of affiliation to the football club, was not use as a trade mark. Justice Laddie then queried whether such use could, nevertheless, be infringement – on this point he referred to the European Court of Justice for guidance.

Instead of addressing the legal issue, the ECJ found that Mr Reed's use of ARSENAL was use as a trade mark (contrary to Justice Laddie's finding) and did not answer the question of whether use of a trade mark perceived as a badge of affiliation to the trade mark owner is a sufficient connection to constitute trade mark infringement.

Because the ECJ made a finding of fact and not law, it had exceeded its jurisdiction and Justice Laddie was only bound by the ECJ decision so far as it addressed the query he had posed to the Court. Because the ECJ decision reflected the legal position that a trader would have a defence to infringement if his use of the trade mark does not indicate trade origin, Justice Laddie found that Mr Reed's conduct did not indicate trade origin and was therefore not infringement.
This is an unsatisfactory result which is being appealed.

Because a trade mark indicates trade origin, the secondary function of a trade mark is to guarantee the quality of the goods or services to which the trade mark is applied. Use of a trade mark perceived as a badge of affiliation to the trade mark owner is liable to jeopardise the guarantee of origin and, as such, arguably constitutes use as a trade mark. It remains to be seen whether Justice Laddie's finding of fact on this point is overturned.

In Australia
Use of a protected name by another party will not be trade mark infringement if the other party can show that the name was not used as a trade mark. Use as a trade mark has been interpreted to refer to the indication of trade origin and Australian courts have held that whether use of a name is use as a trade mark requires an analysis of how it is used and the context in which it is used.

Justice Gummow in the Caplets case (Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals 1991 21 IPR 1) referred to the function of a trade mark in determining when use is use as a trade mark and said:
'The registered trade mark serves to indicate, if not the actual origin of the goods or services, nor their quality as such,
the origin of that quality in a particular business, whether known or unknown by name.'

Use of a trade mark as a badge of affiliation to the trade mark owner by an unauthorised person is liable to jeopardise the origin of quality a trade mark registration affords. Whether use of a trade mark as a badge of affiliation to the trade mark owner is use as a trade mark (or nonetheless constitutes trade mark infringement) is yet to be tested in Australian courts. Hopefully, Australian trade mark owners will have more success in giving unauthorised users a red card than their counterparts have had, to date, in the United Kingdom.

The content of this article does not constitute legal advice and should not be relied on in that way. Specific advice should be sought about your specific circumstances.

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