First published in the INTA Bulletin, 15 July 2018 issue.
In Bohemia Crystal Pty Ltd v. Host Corporation Pty Ltd,  FCA 235 (Mar. 6, 2018), the Federal Court of Australia found the marks BOHEMIA and BOHEMIA CRYSTAL are not to any extent capable of distinguishing glassware, nor are they considered factually distinctive by virtue of their use, and should be removed from the Register.
Bohemia Crystal Pty Ltd (BCP) had imported and sold glassware from the Bohemia region in the Czech Republic for decades, initially under license from its parent company. BCP registered the trademarks BOHEMIA (in 2003) and BOHEMIA CRYSTAL (in 2001) covering glassware in Class 21. BCP alleged that by importing and selling crystal products under the name BANQUET CRYSTAL BY BOHEMIA, Host Corporation Pty Ltd (Host) had infringed its registered trademarks and engaged in misleading and deceptive conduct in breach of Australian Consumer Law. Host cross-claimed for cancellation of BCP’s marks on the grounds the marks were not capable of distinguishing for glassware as of the filing date of the applications, and therefore should not have been registered.
When considering whether the marks were inherently capable of distinguishing, the Court found that when used in relation to crystal and glassware, the word "Bohemia" would signify to both consumers and traders the region where the goods were manufactured; and the words "Bohemia Crystal" would likely denote a particular style of glassware originating from Bohemia.
BCP submitted substantial evidence of use in an attempt to support its claim that the marks had acquired distinctive through use. However, the Court found significant deficiencies in the evidence, as much of it: was not dated prior to the filing date of BCP’s applications, or was use of a composite mark which included other distinctive elements, rather than use of the marks as they were filed. The Court concluded the marks had not acquired distinctiveness as of the filing date and ordered both marks be cancelled from the Register.
As the marks were found invalid, it was not necessary for the Court to consider BCP’s infringement claim; however, the Court did consider that, had the marks been held valid, Host's use of BOHEMIA would infringe BCP’s registrations.
The case demonstrates the need to maintain detailed historical records of use of trademarks to assist in showing your mark has acquired distinctiveness through use, particularly for marks containing descriptive terms and references to geographical regions.