22.15. Geographical names

When assessing the registrability of geographical names we need to assess whether (i) the sign conveys the significance of the geographical name when applied to the goods or services claimed, and (ii) if so, is it likely other traders would desire to use it for this significance?

15.1 Is a geographical name always the ordinary signification of a sign?

It is important to remember, that although a sign may in fact be the name of a place, it may not always signify that location, as explained by Kitto J in Clark Equipment at 515:

It is well settled that a geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstance from carrying its prima facie geographical signification, and that for that reason it may be held to be adapted to distinguish the applicant's goods. Where that is so it is because to an honest competitor the idea of using that name in relation to such goods or in such circumstances would simply not occur: see per Lord Simonds in the Yorkshire Copper Works Case (1953) 71 RPC 150, at p 154. This is the case, for example, where the word as applied to the relevant goods is in effect a fancy name, such as "North Pole" in connexion with bananas: A. Bailey &Co. Ltd. v. Clark, Son &Morland Ltd. (the Glastonbury Case (1938) AC 557, at p 562; (1938) 55 RPC 253, at p 257) (see also the Livron Case (1937) 54 RPC 327, at p 339) …

The above passage provides that there may be instances where the ordinary signification of a sign is not a geographical name even if the sign is in fact a geographical name.

In Colliers International (WA) Pty Ltd [2022] ATMO 37 the hearing officer determined that Cygnet West did not have an ordinary signification of a geographical name for the following reasons:

While I note that the Macquarie Dictionary does refer to Cygnet as a town in Tasmania, I accept the Applicant’s submissions that, given the small size of the town and the lack of any specific reputation, it is highly likely that the relevant persons would see any mark containing the word ‘cygnet’ as a reference to a baby swan, rather than as a reference to a town. While I accept the examiner’s reasoning that the presence of the additional element ‘west’ may, in certain cases, lead to the relevant persons to consider the geographical meaning, such a consideration only becomes relevant if a) such a geographical meaning exists and b) people are aware of it. In the absence of any evidence that ‘Cygnet West’ has any geographical meaning, I cannot conclude that the relevant persons (the vast majority of which would have no knowledge of the town and some knowledge of the use of the word to refer to a baby swan) would view the Trade Mark as anything other than a reference to a swan, or as the Applicant submits, as an allusive reference to West Australia.

Even in respect of the minority of the relevant persons aware of the geographic significance of Cygnet, the fact that there is no locality known as Cygnet West makes highly unlikely that other traders would legitimately need to use CYGNET WEST for its geographical significance in respect of goods and services which are similar to the Applicant’s Goods and Services. For these reasons I am satisfied that the Trade Mark is inherently adapted to distinguish the Applicant’s Goods and Services from those of other traders, and in the absence of any other ground for rejection the application must be accepted.

If there is a primary meaning for a sign other than the geographical name, the ordinary signification of the sign may not be that of the geographical name and the sign may be inherently adapted to distinguish the claims.

15.2 The likelihood that others will desire to use the geographical name

It is also possible that the nature of the goods or services may make it unlikely that other traders will desire to use a sign even if it may have a geographical significance. This was the hearing officer’s determination in R & R C Bond (Wholesale) Ltd [2021] ATMO 36:

… the manufacture of car parts is a specialised undertaking. This type of manufacturing is typically carried out in established industrial areas within large cities and, for its obvious logistical advantages, typically close to centres of vehicle manufacture. There appears to be no vehicle manufacturing in the vicinity of Churchill. Australian manufacturing generally is widely seen as ‘in terminal decline’.[13] Of particular relevance here, is that the number of vehicles manufactured in Australia is also in decline. Mitsubishi, Ford, Leyland, Nissan and Holden, as examples, no longer manufacture vehicles in Australia.[14] There is nothing before me that indicates that Churchill is a place which is well-suited to manufacturing vehicle parts.

Because of the factors stated above, it seems that the likelihood any person would, in the foreseeable future, embark on an enterprise manufacturing vehicle parts anywhere in Australia is low. That a person should choose to embark on such an enterprise and choose Churchill as the location for this endeavour seems to be vanishingly small. Thus, the answer to the second part of the two part test is that other traders are highly unlikely to legitimately need to use CHURCHILL for its geographical significance in respect of vehicle parts. For these reasons I am satisfied that CHURCHILL is inherently adapted to distinguish the Applicant’s Goods from those of other traders, and in the absence of any other ground for rejection the application must be accepted.

If there are factors or circumstances that make it unlikely other traders would desire to use the geographical name in connection with the goods and/or services claimed, then that geographical name may be sufficiently inherently adapted to distinguish the claims. 

15.3 Geographical names which have no inherent adaptation to distinguish

Words which function solely as geographical names, and which have some obvious or potential connection with the goods or services, have no inherent adaptation to distinguish.

The potential of geographical names to have a connection with goods or services is an important consideration.  As Gummow J stated at 503 in the Oxford case when refusing registration of the word, OXFORD, under the 1955 Act on the basis that Oxford was not inherently adapted to distinguish the applicant's books from those of other book publishers whose goods also emanated from Oxford:

The point is if goods of the kind in question are produced at the particular place or in the area, or if it is reasonable to suppose that such goods in the future will be produced there, other traders have a legitimate interest in using the geographical name to identify their goods, and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration.

It is not necessary to establish that a place has a reputation for producing the designated goods/services in order to raise a ground for rejection under s 41 of the Act. It is sufficient that the goods/services have a potential connection with the geographical name.

If there is no reasonable prospect of the goods/services originating from the geographical location, now or in the future, then the geographical name may have some inherent adaptation to distinguish. This will generally apply to locations where it would be unviable in terms of cost and practicality to trade from the location in question:

For guidance, see Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (’Michigan’); Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 (‘Oregon’); Thomson v B. Seppelt (1925) 37 CLR 305 (’Great Western'); Harbin Brewing Co., Ltd [2012] ATMO 48 (11 May 2012) (‘Harbin’); Marriott Worldwide Corporation [2016] ATMO 1 (‘Fairfield’); Mantra IP Pty Ltd [2017] ATMO 10 (‘Bale’)

15.4  Names of foreign towns, localities and other geographic references

Names of foreign towns or localities are to be considered on the basis of their connection or potential connection to the designated goods or services.

The Colorado decision, Colorado Group Limited v Strandbags Group Pty Limited (2007) FCAFC 184 discusses the connection between a foreign geographical reference, the US state of Colorado and goods that include amongst other things bags and backpacks, wallets, clothing and footwear. At 128:

I have difficulty in accepting that the word "Colorado" is inherently adapted to distinguish backpacks, or even bags, wallets and purses. It is not a fancy or made up word. It is the use of a name being a State of the United States of America which has well-known mountains and is a rugged holiday area. In my view, the honest trader could well wish to make use of the signification of the word for geographic reasons – especially in relation to backpacks, or to raise a connotation from the geographic attributes of that State.  

Other words may suggest a geographic relationship and this should be given appropriate consideration at examination. For instance, the word KIWI is defined by the Macquarie Dictionary as of or relating to New Zealand and therefore a ground for rejection may be appropriate where KIWI is a dominant part of the trade mark.

Applications for services

In the case of applications for service trade marks such as SALZBURG DRYCLEANERS or SHAFTESBURY CAR WASH where provision of the service from outside Australia is improbable, a ground for rejecting the application under s 41 is unlikely. An obvious exception to this would be travel or tourism services.

Where the trade mark consists of the name of an overseas geographical reference claiming services, consideration should be given to:

• Whether the services are of the kind that are provided to Australian consumers/traders/purchasers from overseas, and
• Whether the services have some obvious or potential connection with the geographical location

Applications for goods

Registration for goods will be difficult to attain if the items are regularly imported from overseas, marketed on the basis of a foreign style or have some other obvious or potential connection to the geographical location.

The following factors will help to determine whether there is a potential connection to a foreign location:

• Size/population of the geographical area in question

For example, the name of a geographic location with a population in the millions will be unlikely to have any inherent adaptation to distinguish, regardless of the goods claimed. Alternatively, a sparsely populated location where it is unlikely the goods will be provided from or to, may have limited capacity to distinguish, or when all factors are considered, may not warrant a ground for rejection.

• Reputation

A geographic location which has a reputation for producing  particular goods, regardless  of  population or size, will likely have no inherent adaptation to distinguish those goods

• The nature of the goods  - whether they are regularly imported for sale in Australia, and whether they are easy or difficult to produce
• Existing industry/manufacturing capability/ likelihood of future development

Geographic locations which have existing manufacturing capabilities, either for the goods in question or for goods of a similar nature, are more likely to have a potential connection to the goods. Conversely, names of locations which have little to no economic activity and have no reputational connection with the goods may be inherently adapted to distinguish.

Endonyms

Geographical references which are expressed in the language of the place itself should be considered on the basis of their ordinary signification to Australian consumers, purchasers or traders. Consideration should be given to whether other persons are likely to desire to use the word for the sake of its geographic meaning in connection with their own goods or services. For example, the ordinary signification of Deutschland would be understood by most Australians as the German word for ‘Germany’. It is highly likely that other persons would wish to use the word for the sake of its ordinary signification. On the other hand, Foroyar is unlikely to ordinarily signify to Australians a connection to the Faroe Islands, and as such it may have some inherent adaptation to distinguish.

15.5 Geographical names with multiple meanings

Geographical names which have multiple meanings must be considered on the basis of their ordinary signification. Consideration should be given to whether the primary signification of the words comprising the trade mark to anyone in Australia purchasing, consuming or trading in the relevant goods/services is that of a geographical reference. Geographical names with more than one meaning may have some inherent adaptation to distinguish if there is some ambiguity as to whether or not other traders would desire to use the trade mark for its geographic meaning.

15.6  Superseded geographical names

Superseded geographical names that have no connection with the goods such as BYBLOS (class 25) which is the ancient name for the Lebanese town of Jubayl are likely to be prima facie capable of distinguishing.

Geographical names which have been officially superseded recently but are still in popular usage have a degree of inherent adaptation to distinguish but may not be prima facie capable of distinguishing. These could include names such as PEKING, CEYLON and LENINGRAD where the original geographical meaning is still very much the primary signification of the name and is still being used interchangeably with the new name.

The Persian Fetta decision, Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (2010) FCA 1367 provides relevant guidance when considering this issue. At 211:

Persia is not a made up or fictitious country that did not ever exist, and is a name which does relate to a region of the world which can be identified.  The name “Persia” has been officially superseded only within the last century, and there is general usage of the name.  Just like names such as “Peking” and “Ceylon”, the original geographical meaning is still the main signification of the name.  Even if not necessarily being used interchangeably with the new name of the country Iran, the name Persia still is a reference to a specific part of the world in the Middle East. The use of the word “Persian” in the trade mark PERSIAN FETTA does not save the word “Persian” from carrying is prima facie geographical signification.  

And at 212:

“Persian” in reference to cheese is not a fanciful or arbitrary geographical reference like the North Pole is for bananas.  The evidence indicates that there is a degree of association with cheese and the former region known as Persia to conclude that an honest trader would legitimately want to use the term “Persian” to describe fetta cheese.  PERSIAN FETTA (as a composite term) is certainly not a made up term or device unrelated to cheese, or unrelated to a geographical region of the world associated with cheese production of a specific type or style.

Some ancient place names which are no longer population centres presently have tourist significance and therefore could attract a ground for rejection, depending on the goods/services claimed.

15.7  Company towns

Some towns have come to prominence purely because a particular company has established itself there and has been responsible for its growth and subsequent reputation.  If evidence demonstrates that the town’s reputation originates from its business, acceptance for registration may be possible.

15.8  Phonetic similarity to a geographical name

A ground for rejecting an application will generally not exist on the basis of phonetic similarity to existing geographical names. Well known place names have well known spellings and variations on these spellings can render the word inherently adapted to distinguish.  

However, minor misspellings which are phonetically the same and visually very similar to well known place names may not be considered inherently adapted to distinguish.

For example:

15.9  Names of streets, roads, districts and suburbs

These are to be treated like any other geographical name. The test is whether because of the ordinary signification of the trade mark containing or consisting of the geographic reference, other traders are likely to think of the name and desire to use it in connection with their own goods and/or services. Relevant considerations include:

• whether there are other businesses or a commercial area existing in the street, road, district or suburb;
• whether the goods or services are of the kind likely to be provided by other traders in that street, road, district or suburb (for example ordinary consumer goods may be provided by other traders in most areas, whereas highly specialised goods or those requiring significant infrastructure may be less so);
• whether the name is one found in many cities and at least one occurrence is likely to include a business or commercial area (for example “The Esplanade”, “Southbank” or “Victoria Street” are found in many cities and often contain entertainment, retail or business centres); and
• whether the street, road, suburb or district has a potential connection with certain goods or services (for example LYGON STREET has a reputation as a restaurant district and so does not have sufficient inherent capacity to distinguish in respect of restaurant services).

Research will generally give a sufficient indication of the nature of the street, road, district or suburb. Where the name in question is that of a district or suburb consideration must be given to the fact that such areas often incorporate both commercial and residential areas.

15.10  Names of rivers, seas, deserts, mountains etc.

Names of rivers, seas, deserts, mountains and the like will be considered to be prima facie capable of distinguishing goods or services not associated with these geographical features. For example:

• YARRA RIVER or BASS STRAIT would not be prima facie capable of distinguishing fish but could be for musical instruments or compact discs.
• CLARE VALLEY (a wine growing district in South Australia) would not be prima facie capable of distinguishing grapes.  
• HAMERSLEY (a mountain range in Western Australia and source of iron ore) would not be prima facie capable of distinguishing mining services.

Well known names such as SAHARA, ATLANTIC or NORTH POLE could be capable of distinguishing a variety of products if no obvious or potential connection to the designated goods or services exists in relation to the area.

15.11  Names of private buildings

The name of a private building is not analogous to the name of a town, suburb, district or region and may be inherently adapted to distinguish.

For example:

• In MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 (‘MID Sydney’) the large privately owned city office building named Chifley Tower was not considered a geographical location.
• In Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 183 FCR 450 (‘Tailly’) the large privately owned residential apartment building known as Circle on Cavill was not considered to be a geographical location.
• In Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769 (‘Q1’) the name of a privately owned apartment building (Q1) was found to be inherently adapted to distinguish a variety of services including letting services (class 36), travel and tourist services (class 39) and hotel and accommodation services (class 43).

In Q1 Reeves J at 59 summarises the approach as follows:

the name of a privately owned building cannot be regarded as being the equivalent of a geographical place name such that it is considered as part of the common heritage over which the public, including a competitor trading in, or near, the building can claim to have a public right to make honest use of that sign in relation to its goods or services.

15.12  Derivatives of geographical names

If a geographical name is not prima facie capable of distinguishing, a known derivative of the geographical name will likewise not be inherently adapted to distinguish.

For example OZ is a well known reference to Australia. Trade marks consisting only of the word OZ, or OZ in combination with a word or expression with a direct reference to the goods or services being claimed, are unlikely to be inherently adapted to distinguish.

15.13  Geographical names combined with a device

The addition of an ordinary depiction of the goods claimed, or a conventional depiction of a map or national symbol, to a geographical name which is not inherently adapted to distinguish, is unlikely to render the trade mark (as a whole) capable of distinguishing.

For example: