Registering a trade mark for your business will help protect your business’s intellectual property (IP). A registered trade mark will help establish your brand’s reputation, protect your IP assets and ensure you stand out from competitors. Broadly speaking, trade marks for geographical names are not usually capable of registration. However, there are some ways around this. This article will take you through when you can use a geographical name for a trade mark.
Distinguishing Geographical Names
To register your trade mark, it must be unique and distinctive. If a trade mark is not sufficiently descriptive, the intellectual property office may refuse to register the application. Where a trade mark contains a geographical name, it can be hard to distinguish your trade mark sufficiently. This is because others in the same industry need to use the same geographical names. Therefore it would be unfair to allow one business to monopolise its use.
For example, words that have an obvious connection with goods or services are unlikely to be capable of registration. For example, the intellectual property office will likely refuse a trade mark for ‘Maatsuyker’, referring to the Maatsuyker Islands south of Tasmania, as relates to a seafood brand. On the other hand, an application for ‘Maatsuyker’ for a clothing brand may be unsuccessful. This would be because Maatsuyker’s size and isolation restrict the possibility of someone manufacturing clothes from the island.
Endonyms
An endonym, being the native name for a geographical place, may be registrable as a trade mark depending on its ordinary meaning to Australian consumers. For example, most Australians understand ‘Nipon’ as the Japanese word for Japan. Therefore, it may be unfair to monopolise its use. However, the intellectual property office is more likely to register a less commonly known endonym, such as ‘Masr’, for Egypt.
Former Names
Former names of geographical locations that have no connection with the goods or services provided are likely to be capable of distinguishing. However, geographical names which have been recently superseded but are widely understood, such as ‘Saigon’, are less capable of distinguishing.
Derivative Names
Known derivative names of geographic locations are also unlikely to be inherently adapted to distinguish. A common example of this would be ‘Oz, being a widely accepted, shortened version of Australia. Due to it being broadly known, trade marks, including the word ‘Oz’ in combination with reference to the goods or services in question, are unlikely to be inherently adapted to distinguish.
Names of Foreign Towns
Names of foreign towns or provinces are to be considered on the grounds of their connection to the designated goods or services. For example, ‘Kiwi’ is commonly associated with New Zealand. Therefore, a trade mark for ‘Kiwi’ may attract an objection where it is a dominant part of the trade mark.
Continue reading this article below the formGeographical Names with Additional Meanings
Where geographical names have multiple meanings, the term must be considered based on its ordinary meaning. In particular, IP Australia will consider how Australian consumers or traders think of the word and its relevance to the geographical reference.
For example, a trade mark for the business name ‘Bowen Consultancy’ is likely to be refused. As both a town in Queensland and a common surname, the trade mark will likely have no inherent adaptation to distinguish.
Phonetically Similar Names
Where a trade mark sounds similar to a geographical name, it is likely capable of distinguishing. For example, ‘Mullborn’ is likely to be acceptable given it is not a phonetic equivalent or obvious misspelling of Melbourne.
On the other hand, IP Australia has indicated that a trade mark for ‘Melborne’ would likely be rejected. Not only is ‘Melborne’ phonetically identical to Melbourne, but it is also only a minor misspelling of Melbourne and is, therefore visually very similar.
Key Takeaways
Generally, trade marks for geographical names are not usually able to be registered. However, if a geographical name has no obvious or potential connection with the goods or services, then it may be registrable. This may include:
- an uncommon endonym;
- a relatively unknown, former name of a geographical location;
- an uncommon derivative name; or
- a geographical name with a double meaning, such that it would unlikely be seen as a geographical reference.
If you need help registering a trade mark or have general questions about your intellectual property, our experienced trade mark lawyers can help. Get in touch with them on 1300 544 755 or by filling out the form on this page.
Frequently Asked Questions
Generally, trade marks for geographical names are not usually able to be registered as they are not sufficiently inherently adapted to distinguish. However, there are some ways around this. For example, your trade mark might be an uncommon endonym, a relatively unknown, a former name of a geographical location, an uncommon derivative name, or a geographical name with a double meaning. In these cases, it may be possible to register a geographical name as a trade mark.
A trade mark is inherently distinctive when it is completely novel. Alternatively, a trade mark may acquire distinctiveness if it has been used for so long and on such a scale that it has become exclusively associated with your business. Often, a trade mark with a geographical name will not be considered sufficiently distinctive.
We appreciate your feedback – your submission has been successfully received.
