29.9. Geographical references

Trade marks that contain geographic references may include statements such as:

“Product of Australia”

“Proudly Tasmanian”

“Grown in Griffith”

“Made in Sri Lanka”.

A trade mark may also simply include the name or a graphical representation of a town/city/state/country.  

9.1 Connotations resulting from geographical references

Trade marks which contain a geographical reference will often connote the geographical origin or some other attribute of goods or services. A typical example is where a geographical reference connotes that the goods and/or services claimed are of a certain quality or standard, or exhibit attributes for which the geographical reference is known. This was the case in McGrath's Application (1937) 7 AOJP 3599 where registration was refused for “Chateau Orleans Purest Hospital Brandy” for fermented liquors and spirits. The Registrar determined that Orleans was a large French town noted for its wine and brandy production. The application was rejected on the basis that the geographical reference in the trade mark would deceive consumers if the goods were not in fact produced in Orleans.

If a trade mark containing a geographical references is found to connote geographical origin, consideration must then be given to whether ordinary consumers would be deceived or confused as a result. This includes assessing whether the scope of the specification would include goods/services produced in areas outside the geographical location when a consumer would reasonably expect them to originate from the location referenced in the trade mark.

Deception or confusion is not likely to occur if the geographic reference is ambiguous or fanciful (FORGED IN THE OUTBACK on Vehicles, ANTARCTIC BERRIES for Frozen strawberries) or when a word will not be seen as a geographical reference in the eyes of an average consumer (MOCHA for confectionery).

For further guidance, see Re Sakata Rice Snacks (Aust) Pty Ltd (1998) 43 IPR 378 (‘Sakata’), Rubelli Spa v Virtual Couch Industries Sdn Bhd. [2011] ATMO 3

9.2 Is the Trade Mark likely to deceive Australian consumers?

If a trade mark contains an explicit claim about the goods which relates to a geographic location and that claim is not reflected in the specification or an endorsement, the trade mark is likely to deceive consumers if that claim turns out to be false.

Examples of claims that would result in deception include:

“GROWN IN QUEENSLAND” for Dried coconut

“AUSTRALIAN MATERIALS!” for Prefabricated sheds

“100% ITALIAN MARBLE” for Wall cladding

The risk of deception can be mitigated by a suitably specific endorsement or an amendment or limitation to the specification of goods or services.

9.3 Is the Trade Mark Likely to Cause Confusion?

Qualifiers (e.g. “made in”, “product of”) are not necessary for a connotation to be present in a mark. A geographical reference used without any qualifying information may not result in consumers being deceived, but may be likely to cause confusion.

A trade mark containing a standalone geographical reference  will cause confusion if each of the following criteria are met:

• Consumers would have reason to associate the goods/services with the geographical location;
• The association between the place and the goods/services would influence the purchasing decision of an average consumer of the goods/services.
• There are no other elements in the mark, or surrounding circumstances, which would mitigate the risk of confusion. Surrounding circumstances include the manner in which the goods/services are purchased, the physical characteristics of goods and any other factor which would affect consumer perceptions.

Example 1

Trade Mark  -   SHETLAND

Class 25: Clothing

Shetland Mills Pty Ltd's Application (1957) 27 AOJP 2366

Exam Practice -  S 43 ground for rejection applicable.

The Shetlands are a group of islands to the north of Scotland well known for the production of tweeds, tartans and knitwear.

Applied to clothing, the trade mark connotes the goods originate from the Shetland Islands. There is a real likelihood of deception or confusion if the goods are not in fact produced there.

Example 2 

Trade Mark - 

Example 3

Trade Mark -    BALI

Class 25: Bras

Re Bali Brassiere Co. Inc.'S Registered Trade Mark And Berlei Ltd.'S Application (1968) 118 CLR 128

Exam Practice - No s 43 ground for rejection. 

Bali is a geographical location well-known to Australians, but consumers would have no reason to associate it with the designated goods.

Bali has no reputation or fame for producing bras and the risk of Australian consumers being deceived or confused as a result of the connotation present in the mark is low.

Example 4 

Trade Mark -    TUSCAN EFFECT

Class 2: Paint

Orica Australia Pty Ltd v Wattyl Australia Pty Ltd [2003] AIPC 91-866; [2003] ATMO 7   

Exam Practice - No s 43 ground for rejection.

Although the trade mark contains a reference to Tuscany, the word EFFECT changes the connotation of the trade mark.

Consumers are not likely to think the paint originates from Tuscany, but rather that the paint will give a surface a Tuscan-style finish.

For more guidance on factors which affect the likelihood of confusion, see New Zealand Winegrowers v Lacheteau SAS [2009] ATMO 82 (‘KIWI CUVEE’),  Leroy SA v Regal Grange Pty Ltd [2001] ATMO 9 (‘LEFROY VALLEY VINEYARDS’), McWilliams Wines Pty Ltd v Lovedale Chamber of Commerce [2007] ATMO 8 (‘LOVEDALE – THE HEART OF THE HUNTER’) .

9.4 Services Claims

The same considerations apply to services as to goods, though careful consideration needs to be given to circumstances which may mitigate the risk of deception or confusion.

For example:

PARIS for Provision of food and drink

Paris is the well-known capital city of France and has a reputation for its food scene. However, if an Australian consumer were to go to a restaurant named ‘Paris’, they would clearly not believe they were suddenly in Paris, or that it would be likely that the food or drinks were prepared there (though they may assume that Parisian style food would be served). In this instance, the nature of the service (being one that is necessarily provided in person) is a surrounding circumstance which would mitigate any risk of confusion resulting from the geographical reference in the trade mark. No s 43 objection would be necessary.

This trade mark contains a reference to the rural town Scone in NSW. Research indicates that this town is known as 'The Horse Capital of Australia' and claims to be the second-largest horse breeding area in the world, after Kentucky in the United States. Consumers of these services may wish to obtain breeding services from this highly reputed horse breeding center. Consumers would expect the services to be provided from Scone and if this were not the case, it is likely they would be deceived or confused. A ground for rejection under s43 would be appropriate in this instance.

9.5 Overcoming Grounds for Rejection

An applicant will be able to overcome a geographical s43 objection by agreeing to a condition of registration or a specification amendment which removes the likelihood of consumers being deceived or confused. This is the sole criterion for conditions or limitations applied in order to overcome grounds for rejection raised under s43.

The condition of registration or specification amendment must directly address the connotation in the trade mark.

Examples:

XYZ Company

Grown in Australia

Class 29: Dried herbs

_ _ _ _

Class 29: Dried herbs grown in Australia

OR

It is a condition of registration that the goods specified within the application are grown in Australia.

XYZ Company

Casino’s best beef

Class 31: Beef Cattle

_ _ _ _

Class 31: Beef cattle from Casino, NSW

OR

It is a condition of registration that the goods specified within the application are from Casino, NSW.

9.6 Business Identifiers

Where business identifiers are included in a trade mark (e.g. A TASMANIAN COMPANY, RIVERINA DAIRY CO.) this tends to indicate a characteristic of a business rather than the goods or services themselves. A ground for rejection will rarely apply in these cases.

See USA Detergents, INC v Magnatex International Pty Limited [2001] ATMO 29, Deyncourt Pty Ltd v Scott Mitchell Passmore as trustee for The S R G Passmore Investment Trust [2019] ATMO 26

9.7 Implied endorsement or licensing

Trade marks that consists of, or include wording and/or imagery that connotes a connection with a well- known reference may also give rise to deception and confusion. The inclusion of such material may result in ordinary consumers being deceived and confused on the basis of incorrectly believing that the trade mark indicates an endorsement or approval from the party or parties that own and have control over the well- known material.

When faced with this type of reference it is important to remember that the connotation must be from the trade mark itself and not from any other external considerations such as a reputation in another trade mark. The particular currency (or relevance) that the reference currently has and the extent to which it is well known are also important considerations. The connection between the goods and / or services that the reference is well-known for and what has been included as part of the specification are also relevant factors.

This issue is one where evidence will in most cases play an important role in determining the strength of the connotation and for that reason, an objection on this basis is usually more appropriate for consideration during the opposition stage.

See the following decisions for further detail:

Radio Corporation Pty Ltd v Disney [1937] HCA 38; 57 CLR 448 (‘Mickey Mouse’);

Amalgamated Television Services Pty Limited v Sylvia Margret Clissold [2000] ATMO 14 (‘Home and Away’);

Amalgamated Television Services Pty Limited v Pickard [2000] 48 IPR 133 (‘Summer Bay’); Twentieth Century Fox Film Corporation v Michael F Durkan [2000] ATMO 5 (‘Braveheart’); McCorquodale v Masterson [2004] 63 IPR 582 (‘Diana’s legacy & device’);​​​​​​​