Registering geographical names as trade marks

Is it possible to register a geographical name as a trade mark?

Section 3(1)(c) of the Trade Mark Act 1994 provides that trade marks that consist exclusively of signs or indicators which may serve, in trade, to designate the…geographical origin..or other characteristics of the goods or services shall not be registered.

The case of Windsurfing Chiemsee Produktions v Huber (Joined Cases C-108 and 109/97) [2000] Ch. 523 provides guidance on the registration of geographical place names. In this case the applicant attempted to register the word ‘Chiemsee’ as a trade mark, however ‘Chimesee’ is the largest lake in Bavaria. The Court of Justice recognised that the Trade Mark Directive (2008/95/EC) does not prohibit geographical names from being registered, where the name is associated in the minds of the relevant class of persons with the relevant class of goods.

The Court went further and stated that where there is no association in the minds of the relevant class of persons, an assessment should be made. This assessment will look to determine if the name is capable of designating the geographical origin of the goods in question. This is done by assessing the familiarity of the relevant class of persons with the relevant class of goods and the place designated by name. The Court said that the goods do not have to be made in a particular location to be associated with it.

This was taken into account in the High Court in the case of Canary Wharf v The Comptroller General of Patents, Designs and Trade Marks [2015] EWHC 1588 [Ch]. In this case the word ‘Canary Wharf’ was refused registration on the grounds that it may serve in trade to designate the geographical origin of the services in question.

It is possible to come to the conclusion that if brand owners are attempting to achieve trade mark registration, a non-descriptive mark that is unrelated to the goods and services in question would be advisable. However a descriptive mark incorporating a geographical name can be advantageous when seeking to build a dominant brand, possibly the reason why many brand owners take the risk of a contestable application. 

Article By Sam O’Toole

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