Trade mark registration is important for any business. However, many businesses have a name that contains a geographic location, which can raise a red flag for IP Australia. IP Australia is the governing body of intellectual property (IP) in Australia, and they check all trade marks to ensure they are distinctive before agreeing to register them. It is not uncommon for a geographical trade mark to struggle to meet this distinctiveness test. This article will provide some background on using a geographical trade mark and explain how you can register your business name.
Using a Geographical Trade Mark
Using a geographic location in your business name can show your customers the origin of your goods or services. However, while brand recognition is important, it is not the same as brand protection. A trade mark gives you exclusive rights to use your business name or logo in your industry. Trade mark registration also allows you to take action to stop others using a similar trade mark within your industry.
There are many popular and recognisable geographical trade marks. These include:
- King Island Dairy;
- Australian Geographic;
- Cape Grim Tasmania Natural Beef; and
- Petuna Tasmanian Atlantic Salmon.
These popular geographical trade marks have become veritable badges of origin for the goods and services they represent. They have been successful in this thanks to their prolonged, extensive and continuous use of their names.
A trade mark needs to be capable of distinguishing your products or services from other traders to be accepted by IP Australia. Generally, you are not allowed to monopolise the name of a place or region for your business, unless you have significantly used the name over time.
For example, Lygon Street in Melbourne is a popular restaurant and cafe district. It would be difficult to trade mark the name ‘Lygon Street Cafe’, since other restaurants rely on using ‘Lygon Street’ to describe their services.
Business names that include geographic locations will only be successfully registered if you have evidence that you have used the name for a long time and, therefore, the name distinguishes your goods or services from others. You could also prove this by having a distinctive and stylised logo, which we explain further below.
As a general rule, the more significant or well known the geographic location, the more difficult it is to trade mark. This is because a broad or well-known place will probably not distinguish your business from others also in that area.
Registered Geographical Trade Marks
Despite the difficulty in registering a geographical trade mark, there are a number of brands that have successfully done so.
Geographic Names You Cannot Register
There are a couple of situations in which you cannot register a geographical trade mark. These include when the geographic location:
- has an obvious connection with the goods or services, e.g. a business called Sydney Tours that offers tours in Sydney could not register their name as a trade mark; or
- is an area that has a reputation for being a primary place for a range of goods and services, e.g. ‘Pitt Street Sandwiches’ could not register a trade mark for their business name, as Pitt Street is a popular shopping strip occupied by a number of businesses from a range of industries.
Australian Towns or Localities
If your trade mark contains the name of an Australian town, locality, road, street or place, IP Australia will assess your name based on its connection to your business and industry.
Your trade mark application may not be successful if the geographic location:
- has a reputable connection with certain specialised goods; or
- is found across Australia.
For instance, IP Australia would not register ‘Market Street Grocer’ at first instance, since there are many Market Streets across Australia and other traders on other Market Streets may need the name.
Foreign Towns or Localities
Similar to Australian towns, IP Australia considers business names that include the names of international towns or localities based on:
- the connection they have to Australia; and
- how commonly they are used in Australia.
For example, you would have a good chance of successfully trade marking the business names ‘Paris Car Wash’ and ‘Salzburg Dry Cleaners’ if they were based in Australia. However, if those businesses were located in Paris and Salzburg respectively, they would lack distinctiveness, as outlined above, and registration would prove difficult.
Registering a geographical trade mark can be a difficult process. However, if you have a business name that contains a geographic location, and you would like to get a trade mark registered, there are two options.
|Use the name for a long period of time||
If IP Australia objects to your trade mark application by saying it is not ‘distinctive’ enough, you can respond to this objection by proving you have used the trade mark over time.
You will have to submit evidence that proves you have extensively used the trade mark in the market continuously. Your aim is to prove that your trade mark, through use, is able to distinguish your brand from others.
Therefore, if you have been trading for over three years, this may be the best option for your business.
|Register a stylised logo||
Another option is to register your geographical trade mark as a stylised logo. This is where you have a stylised word element, with a motif or image. A stylised logo has the ability to distinguish your mark from other traders’.
This is the best option if you have just started your business and are wanting to use a geographic location in your business name.
Registering a trade mark for your business name is an important part of any business’ brand protection strategy. However, if your business name includes a geographic location, registration can prove difficult. Despite this, attempting to register a geographical trade mark may still be worthwhile, particularly if you have used the name for a long time or have a stylised logo.
If you have, or are interested in, a business name that includes a geographic location, and you would like to discuss registering a geographical trade mark, contact LegalVision’s trade mark lawyers on 1300 544 755 or fill out the form on this page.
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