Geography Reference
In-Depth Information
(e) Deceptive marks
The Community Trade Mark Regulation and the Trade Marks Directive both
provide an absolute bar to trade marks which are of such a nature as to deceive
the public as to the geographical origin of goods or service. The OHIM Trade
Marks Manual points out that this ground for refusal also applies where the
mark contains elements other than the geographical term.
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The UK Trade Marks Examination Manual, referring to s 3(3)(b) of the Trade
Marks Act 1994, which enacts this aspect of the Trade Marks Directive,
explains that objections should only be taken at the first examination stage to
place names or figurative marks indicating geographical origin where the place
has a reputation for the goods or services and gives the examples of:
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+
PIAZZA D' ITALIA for 'clothing', because the public would be deceived
if the goods or the cloth were not made in Italy, which has a strong
reputation for quality cloth and clothing;
+
SOMERSET GOLD for 'cider', because Somerset is well known for its
cider;
+
SWISSTEX for 'watches', because Switzerland is famous for high-quality
watches.
The UK Trade Marks Examination Manual provides that s 3(3)(b) may be
overcome by restricting the specification to goods
manufactured in
the appropri-
ate place for manufactured goods or
produced in
for other goods, for example:
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SWISSTEX:
'Watches and horological instruments; all manufactured in
Switzerland';
LOCH DOUGLAS:
'Salmon and salmon products; all the produce of Scotland'.
9. Trade Marks and Protected Geographic Indications (PGIs) or Protected
Denominations of Origin (PDOs)
(a) Signs which consist of or contain a PGI/PDO for wines
It will be recalled that Art 7(1)(j) of the Community Trade Mark Regulation
No 40/94 provides that trade marks for wines which contain or consist of a GI
identifying wines with respect to such wines not having that origin are not to be
registered.
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OHIM Trade Marks Manual at 41.
