Geography Reference
In-Depth Information
which concerned the word mark 'OZARK' which was opposed by Wal-Mart
Stores, Inc, a US-based department store group. The objection was based on the
fact that the word 'OZARK' was an indication of geographical origin, an area of
high lands in central southern USA. The Hearing Officer considered that it
would not be seen by consumers in the UK as anything other than an invented
word. He said that in the unlikely event that UK consumers understood the
geographical significance of OZARK he did not accept that they would be
deceived into believing that it had some direct reference to the goods. Interest-
ingly, it was pointed out that Wal-Mart Stores, Inc had obtained the registra-
tion of the trade mark 'OZARK TRAIL' in the USA, where its geographical
significance was likely to be known.
6.17
In relation to overseas place names, the UK Trade Marks Manual points out
that in practice, it may be easier to register the name of a small or medium-size
overseas location than it would be to register the name of a comparable size
location in the UK for the same product.
6.18
In Case C-265/00,
Campina Melkunie BV v Benelux-Merkenbureau
21
the ECJ
determined that a trade mark which is composed of a number of elements, each
of which is descriptive of the goods/services in the application, is excluded from
registration under unless the trade mark is perceptibly more than the sum of the
meanings of its descriptive parts. That case concerned the sign 'BIOMILD' for
food products in Classes 29, 30 and 32. This was considered to be merely
descriptive of the qualities of those goods, namely: 'biological' and 'mild'.
6.19
In a geographical marks context, the mark EUROLAMB was found to be
unregistrable on the grounds that the element EURO is commonly used to
indicate 'European' and conjoining EURO and LAMB therefore results in
nothing more than a composite description of the kind and geographical origin
of the goods, which is no more registrable than the term 'European Lamb'.
22
6.20
Similarly, in Australia a word of prima facie geographical signification will be
rejected for registration, particularly if goods of the kind for which it is sought
to be registered are produced at the place or in the area,
23
or if it is reasonable to
suppose that such goods would be produced there in the future.
24
21
[2004] ECR I-01699.
22
EUROLAMB trade mark case [1997] RPC 279.
23
'MICHIGAN' for earth moving equipment,
Clark Equipment Company v Registrar of Trade Marks
(1964) 111
CLR 511 at 515-16 (High Court).
24
'OXFORD' for printed publications,
Chancellor, Masters and Scholars of the University of Oxford (Trading as
Oxford University Press) v Registrar of Trade Marks
(1990) 24 FCR 1 at 23 (Full Federal Court); COLORADO
refused for outdoor bags,
Colorado Group Ltd v Strandbags Group Pty Ltd
(2007) 164 FCR 506 (Federal Court).
