The geographical trade mark loophole

The general principle in relation to geographical trade marks is they cannot be registered. If the law allowed their registration it would lead to the creation of monopolies over places in which a number of businesses would operate from. It would create an unfair advantage.

This principle is outlined in section 1 (c) of the Trade Marks Act 1994 which states “trade marks which consist exclusively of signs or indications 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” cannot be registered.

However following the case of Windsurfing Chiemsee Produktions- und Vertriebs GmbH v Boot- und Segel-zubehör Walter Huber (C-108/97 and C-109/97), a potential loophole has developed.

The Court of Justice for the European Union (formerly the European Court of Justice) gave a preliminary ruling in regards to an application for ‘chiemsee’, a lake in Bavaria, for the service of water sports. Another retailer of sports clothing in the same area objected the claim stating that not only will it cause confusion with their business but it should not be registered due to its geographical nature.

The court ruled that, in normal cases the mark would be refused due to its geographical nature; however there is an exception to this rule. As a geographical name is seen as descriptive, if a mark can gain distinctiveness through use then it can be registered. The mark would have had to be used over a pro-longed period and the parties would have to provide evidence that the use has made the mark distinctive and there is sufficient customer recognition in relation to the mark’s connection with the company.

This ruling gives any one the opportunity to register their geographical trade mark that would normally be refused. However, be wary that this is not a certainty to succeed. If you have any queries, get in contact with Jane at The Trademarkroom.

By Ellis Sweetenham