|Registrability of Marks being Geographical Origins|
Intro: Is it possible to register a mark which is the name of a street, a city, a river or other geographical region?
Geographical origin is descriptive
As discussed in our Newsletter of October 2008, in order to be registerable, a mark must (1) distinguish the owner from other sellers of the same goods, while at the same time, the mark must (2) not consist only of a description of the goods. It seems that a mark consisting exclusively of a geographical name would be a description of the origin of goods and should not be registrable.
In the geographical context, the above requirements exist to protect the public’s interest in the free use of geographical names which designate the origins of goods. The goal is to prevent people from “marking” the name of a geographical area that consumers might associate with the products. It would be unfair to other traders if a company could register “Hawaii” for use with their tropical fruit products. On the other hand, we do not want to preclude the use of a word simply because it happens to be the name of an unknown place on earth. Thus, it is still possible to register a name as trade mark which also exists as a geographical name under the appropriate circumstances.
The case law
The case Peek & Cloppenburg KG v OHIM Case T-379/03 (“Cloppenburg”) spells out the factors to decide whether a geographical name is registrable. It is held in Cloppenburg that the threshold question is whether the geographical name is known to the consumers as the designation of a place. If the name is unknown to the consumers, the inquiry ends and the Mark can be registered. If the name is known, the test is whether the name is associated with the goods in question in the consumer’s mind, or is reasonably assumed by the consumers to designate the origin of the goods. The relevant factors are the consumer’s degree of familiarity with: (1) the geographical name in question; (2) the characteristics of the place designated by that name; and (3) the category of goods or services concerned. Therefore, it is still possible to register a geographical name if the location is relatively unknown to consumers, for example, places with low population and with no reputation in relation to the goods to be registered.
On the other hand, it will be registrable if the mark also contains a distinctive element in addition to the geographical name. However, one should also pay attention to section 11(4)(b) of the Trade Marks Ordinance (Cap. 559) which states that a mark shall not be registered if it is likely to deceive the public. The deception here includes a misrepresentation of the origin of goods. If the goods under the mark are not originated from the geographical area the mark represents (for example, the mark for chocolate contains the word “Swiss” while the chocolate is not made in Switzerland), the mark may be liable to deceive the public, and is therefore not registrable.
You should not be deterred from registering a mark for your product simply because the desired name also happens to be the name of a street, a city, a river or other geographical region. A careful analysis of the above mentioned factors will help gauge the likelihood of success of registration.
Without knowledge of the background/facts of the individual matter, we do not intend for the above summary to deal with every important topic or to cover every aspect of the topics with which it deals. Such summary is for general information purposes only and is not intended to provide legal advice.
Please contact our Intellectual Property Practice Group:
Senior Partner, Head of Intellectual Property & Technology Practice Group
+(852) 2107 0315
+(852) 2107 0329
|Dr .Toby Mak
+(852) 2107 0351
Published by ONC Lawyers © 2009