This matter concerned the application by Marriott Worldwide to register its trade mark FAIRFIELD in relation to business services (Class 35) and hotel services (Class 43).

The application was objected to by the Trade Marks Office on the basis of the inherent distinctiveness of the trade mark, because ‘Fairfield’ is a geographic place (a Sydney suburb) and, as such, other traders are likely to have a legitimate need to use the mark.

In response to the initial objection, the applicant offered to enter a limitation to its services to the effect of; none of the services being provided in relation to the geographic location of Fairfield.

The Examiner rejected this suggested limitation as it would not comply with section 43, that is, the limitation would be likely to lead to consumer deception or confusion as consumers would expect that the services were related to the geographic location of Fairfield.

At the Hearing the applicant led evidence of its worldwide use and registration of the trade mark FAIRFIELD in relation to its business and hotel services. In his decision, the Hearing Officer noted that the section 41 objection was, in his view, correctly raised. Furthermore, the Hearing Officer also noted that the proposed limitation would not address the section 41 objection, as the scope of the application would not be limited to places outside of Fairfield. So, even though the applicant’s services were not from, or related to, Fairfield, other traders in Fairfield may be prevented from using that mark legitimately.

To view the Office decision, click here.

This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions. You can view the entire month’s summary here.