Geographical trade marks: not out of reach following marble dispute

Those of you who know the finer details of trade mark law will know that a trade mark containing a geographical location will be refused.

This is because it would allow the applicant to have a monopoly over a location in which many businesses will trade.

There has been a number of cases in which applicants have got around this stumbling block by arguing that the mark had acquired distinctiveness at the time of filing.

However, it seems the Intellectual Property Enterprise Court have created another path around the law in a recent decision.

The Claimant was ‘Mermeren’ who are a marble extraction company based in Macedonia. They have been extracting marble from the Prilep area since 1950, including in the mountain pass known as ‘Sivec’ which is a popular place for extracting marble.

They own an EU trade mark for ‘Sivec’ for all marble types.

The Claimant took action against Fox Marble who are based in the UK and had started selling marble under the name ‘Sivec’. They made a claim for infringement.

However, Fox Marble hit back and counterclaimed that Mermeren’s mark was invalid and they had a defence to infringement as the mark constituted of a geographical location known to those working in the marble trade.

The case was considered by HHJ Hacon, in which he had to decide if the average consumer would deem ‘Sivec’ as being a geographical location.

It was agreed that the average consumer would be ‘a specialist dealer in marble or a person who advises their customers on the choice of materials to be used in a building, such as an architect or designer of interiors’.  Crucially, as the mark was registered in the EU, the average consumer would come from the EU which does not include any person from Macedonia which would be the people who would recognise the mark as being a geographical location.

The Judge therefore concluded that as ‘Sivec’ is a very obscure place that few people would have heard of, even less that are the average consumer in the EU, the mark cannot be indicated as a geographical location in the minds of the average consumer.

Fox’s counter claim crumbled into dust at this point as the mark was held to be valid.

In short, therefore, it seems that the geographical location decisions of the past will no longer be as clear cut. It will be interesting to see how this decision will be followed.

If you wish to protect your brand as a trade mark, contact The Trademarkroom team today.

By Ellis Sweetenham