Key takeouts

  • Trade marks that contain references to geographic areas (countries, states or regions) can be tricky to maintain.
  • Protecting these marks requires an ongoing effort to distinguish your brand associations from generic words and terms.
  • Maintaining historical records of use can help you build a case for the distinctiveness of your mark.

The case

The recent decision in Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd caught our eye due to its implications for Australian trade mark owners. In the case, Bohemia Crystal Pty Ltd (BCP) alleged that Host Corporation Pty Ltd (Host) had infringed its registered trade marks for the terms BOHEMIA and BOHEMIA CRYSTAL (which we'll call the BOHEMIA Trade Marks). BCP also alleged that Host engaged in misleading and deceptive conduct under the Australian Consumer Law (ACL). Host cross-claimed for revocation of the BOHEMIA Trade Marks.

For decades, BCP had been importing and selling glassware from the Bohemia region in the Czech Republic, which is renowned for its expertise and glass/crystal making culture. Until 1999, BCP had sold glassware in Australia under marks licensed to it by its parent company. The BOHEMIA Trade Marks were filed by BCP in 2003. Host sought revocation of the BOHEMIA Trade Marks on the basis that they should never have been registered. Host argued that objections should have been raised on examination on the basis that the BOHEMIA Trade Marks lacked distinctiveness.

The decision

Host was successful in removing BCP’s BOHEMIA Trade Marks from the Register. As such, the presiding judge (Burley J) dismissed BCP's claims that Host had infringed its BOHEMIA Trade Marks. BCP's claim of misleading and deceptive conduct was also dismissed.

In considering the question of distinctiveness, his Honour found that, as at the filing date of the registrations, the BOHEMIA Trade Marks had no inherent capacity to distinguish. The ordinary signification of BOHEMIA was found to be merely a geographical reference and stylistic descriptor. In finding this, his Honour rejected BCP's expert evidence that BOHEMIA connoted a conceptual or mythical place.

The matter then turned to whether, as at the filing date of the applications, BCP had used the BOHEMIA Trade Marks to such an extent that they had acquired distinctiveness. In doing so, his Honour noted that prior to 1999, neither mark was used by itself in advertisements, on packaging, in stores or in showrooms. Rather the word “BOHEMIA” tended to be used as part of composite marks, or descriptively. This outcome led to a conclusion that the BOHEMIA Trade Marks had not demonstrated acquired distinctiveness as at the filing date of the applications.

Interestingly, in removing the marks, his Honour stated that BCP's use of the Trade Marks Register was "antithetical to the policy and purposes of the Trade Marks Act" and stated at [248] Bohemia Crystal "has incorrectly had the benefit of the monopoly since the relevant dates".

What this means

In relation to the registrability of trade marks, the case affirms the test for 'inherently adapted to distinguish', as outlined by the High Court in Cantarella (2014). The test concerns the intrinsic qualities of the words themselves and the meaning accorded to them as part of the common stock of language and includes the ordinary perception of both consumers and traders.

In this way, trade mark holders should be particularly cautious of the distinctiveness of their branding if it contains geographical or stylistic characteristics. This is even the case where the name of that geographic place has been superseded.

Trade mark owners should also note that even if there are other suitable descriptive words available to competitors for use at the time of registration, the competitor can still apply to have the relevant mark removed from the Register. In any case, those looking to have a trade mark registered containing descriptive terms should consider the ongoing need to distinguish the registered mark from the ordinary meaning of the relevant words, in the eyes of the relevant market as a whole.

Finally, the case highlights the importance of maintaining historical records of use, particularly where the mark contains descriptive terms. For example, evidence of significant sales and advertising expenditure alone is unlikely to successfully support a claim of distinctiveness. Rather, a court will likely require dated examples of the marks used in advertisements and on any packaging referred to by financial records.