Trade Marks- Geographic Origin

The Trade Marks Act 1994 prohibits the registration of marks that consist exclusively of signs or indications which may serve in trade to designate the geographical origin of goods or services. A good example of this is if you are a company that sells clothing and are called Saville Row, the public already are aware that the road in London is famous for their clothing retailers and will presume that the clothing has come from there.

There are however some circumstances in which geographical indications can be registered. The Intellectual Property Office’s guidelines on this are based on the European Court of Justice judgment in Windsurfing Chiemsee Produktions und Vertriebs GmbH v Boots und Segelzubehör Walter Huber and Franz Attenberger (Joined Cases C-108/97 and C-109/97).

The guidelines provide that trade mark examiners must take in to consideration all relevant factors in assessing the potential for other traders to use the sign as a geographical designation. These include whether the geographical location has a reputation for the relevant goods or services or, if not, whether the place is, or is likely to become in the future, a geographical source for such goods or services, and the extent to which the location is known to the relevant class of persons in the UK and what it is known for. If the origin of the product has a reputation, to allow a trade mark to be registered with the name for the reputed goods would be unfair as it will exclude others from using that name.

If you have a brand that indicates the geographic origin of the goods and services that you provide and would like advice on the registrability, please call us on the number at the top of the page and one of our experienced staff can assist you.