The Federal Court of Australia has found that the marks BOHEMIA and BOHEMIA CRYSTAL are liable to be removed from the Register of Trade Marks.

Those marks were registered in respect of glassware and crystal, and were found to be incapable of distinguishing these goods from the goods of other people. We focus in this report on that aspect of the decision.

Background

It was not in dispute that glass and crystal products have for hundreds of years been manufactured in a region that up until at least the commencement of World War I in 1914 was known as Bohemia. In 1918 the independent republic of Czechoslovakia was created, incorporating regions that were formerly part of Austria and Hungary and including the area formerly known as Bohemia. Czechoslovakia was subsequently divided into the separate nations of the Czech Republic (now called Czechia) and Slovakia.

Glass and crystal products continue to be made in the Czech Republic, including in parts of that country known as Bohemia.

Bohemia Crystal Pty Ltd (BCP) was originally a wholly owned subsidiary of the government entity responsible for the export of all glass and crystal products made in Czechoslovakia (and later the Czech Republic). In that context, it was licensed to use certain trade marks that incorporated the words BOHEMIA or BOHEMIA CRYSTAL.

Since its incorporation, BCP has distributed and sold glassware sourced from within Czechoslovakia and (since 1 January 1993) the Czech Republic via third party retailers, its websites and from its own stores.

BCP obtained trade mark registrations for ‘BOHEMIA CRYSTAL’ on 5 October 2001 and ‘BOHEMIA’ on 2 May 2003.

The first respondent, Host Corporation Pty Ltd (Host) is an importer and supplier of catering goods and equipment that supplies a range of goods including crockery, cutlery, glassware, kitchenware and appliances to the catering trade.

BCP sued Host for infringement of those trade marks by selling goods in Australia in packaging or via media that bore the word BOHEMIA or various iterations of phrases containing that word.

Findings on cancellation case

To be registrable, a trade mark must be capable of distinguishing the applicant’s goods from those of other traders. If a mark is not inherently adapted to distinguish those goods, or is only to some extent so adapted, then it may still achieve registration if, by the applicant’s use of the mark, it has become distinctive (s41 of the Trade Marks Act 1995 – note that this decision was based on the wording of s41 before it was changed on 15 April 2013).

In examining whether the marks were inherently adapted to distinguish the applicant’s goods, the Court emphasised that it is not just the meaning of words in the minds of consumers that is relevant, but also what the words would mean to anyone ordinarily purchasing, consuming or trading in those goods. Indeed, the historical focus of the test for inherent distinctiveness is whether other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same mark or some mark nearly resembling it in connection with their goods. The Court said:

Naturally, the desire of traders to use a word may depend on the perception of consumers’ understanding of it. This leads to the result that consideration is to be given to both.

Host filed evidence from several Australian and Czech traders in glassware and crystal to the effect that Bohemia and Bohemia Crystal were words that they ordinarily used and desired to use to describe their goods. In fact some of the Czech traders had been prevented from using and/or registering their own logos in Australia by BCP’s conduct (which the Court stated was “antithetical to the policy and purposes of the TM Act.”)

Host also filed evidence of dictionary and encyclopaedia meanings for ‘Bohemia’ and ‘Bohemia crystal’, and uses of ‘Bohemia’ to describe the relevant geographical region and ‘Bohemia Crystal’ to describe crystal and glass from that region (such as in travel guides and pamphlets for glass auctions).

BCP attempted to argue that Australian consumers would think of Bohemians (of the non-conformist lifestyle persuasion) when they see the words Bohemia or Bohemia Crystal. The Court held that such evidence:

“… demonstrates that one meaning for the word “Bohemia” may be a place from where people who adopt a “Bohemian” lifestyle come. That accords with one of the dictionary definitions identified. However, I consider that Professor Moore’s evidence is largely beside the point. The question relevant to the current inquiry is what is the ordinary signification of the relevant words to the target audience in the context of usage in relation to the relevant goods. That usage is to be considered leaving aside the “effects of registration” of the marks concerned, but having regard to the likely meaning. In this regard, I do not think it at all likely that persons who consider the word “Bohemia” in the context of glassware will be caused to think of the mythical place of origin for those persons who lead an unconventional lifestyle or the place where such persons live.”

On the issue of the test for inherent adaptation to distinguish BCP’s goods, BCP argued that Host or other traders did not need to use “Bohemia” to describe their goods, because they could use modern words such as “Czech Crystal” instead. In dismissing that submission, the Court said:

“the question is not one of “need” but whether traders are likely, with no improper motive, to desire to use words for the ordinary signification which they possess.”

So, a cancellation applicant does not need to establish the higher ‘need’ threshold, wherein the relevant words were effectively the only words available to describe the relevant goods, but rather that other traders would desire to use that word.

It was also of no detriment to the cancellation case that the relevant geographical region has no current geopolitically recognised boundary (in a similar vein to Persia, Peking or Ceylon).

Having recognised that the ordinary signification of Bohemia is a geographical region famous for glass and crystal, the Court found that there is little doubt that ‘Bohemia Crystal’ would be understood to mean crystal from Bohemia.

In attempting to prove that its marks had acquired distinctiveness by use, BCP adduced evidence of what it said were promotional efforts in respect of those marks. That evidence was found deficient in several ways, including that it tended to show that the majority of the claimed promotional activities involved the use of composite marks comprising various graphical elements and/or words as well as the words ‘Bohemia’ and/or ‘crystal’ – rather than the registered marks on their own. The Court held in that regard:

“I have some difficulty with the proposition that the words “Bohemia” or “Bohemia Crystal”

should in this context be regarded as having separate trade mark signification beyond the

combination in which they appear in the composite marks described above, In my view it is the combination of elements that is distinctive. The trade mark should be viewed as a whole and not dissected into parts. Although this is likely to be a matter of fact for each case, it is notable that several cases have cautioned against the proposition that separate elements should be so distilled.”

The Court ultimately found each of the marks to be incapable of distinguishing the goods over which they were registered from the goods of other persons and liable to be removed from the Register of Trade Marks.

Wrays represented Host Corporation Pty Ltd.

At the time of writing, this judgment is open to appeal.