Registrability of Trade Mark [2.0]

Registrability of Trade Mark – Geographical Name

There is strong precedent derived from decided cases that a geographical name is prima facie unregisterable due to lack of inherent distinctiveness. Further, no one should be able to monopolise a geographical name since this may impose unreasonable restraints on other traders who may also wish to use that name in their course of trade.

However, such preposition of law is not exhaustive and is subjected to several exceptional circumstances.

Case: Yorkshire Copper Works Appn (1954) 71 RPC 150

“For just as a manufacturer is not entitled to a monopoly of a laudatory or descriptive epithet, so he is not to claim for his territory whether country or town, which may be in the future, if it is not now, the seat of the manufacturer of goods similar to his own.”

This case indicates that geographical names can only be registered if they are distinctive of the goods or in other words, the name possesses some inherent ability to distinguish. The distinctiveness here means until and unless no other traders would honestly think of using that geographical name in relation to similar goods in the course of their trade, then the geographical name may be registered.

Further, the significant of the above case lies on the principles that a geographical name may be registered if it is not known for the goods or services for which it is used.  

The above preposition supports the registration of ‘Arctic’ and ‘North Pole’ for bananas.

Statutory provisions in Trade Mark Act 1976

Section 10(1)(d) provides that

In order for a trade mark to be registered, it shall contain or consist of at least one of the following particular: (d) a word having no direct reference to the character or quality of the goods or services not being, according to its ordinary meaning, a geographical name or surname.  

The phrase ‘according to its ordinary meaning’ cited in the above statutory provision illustrates the requirement of inherent distinctiveness for a geographical name to be registered as trade mark.

There is another statutory provision worth mentioning as far as the geographical name is concerned. Upon this effect, section 14(1)(a) is equally relevant.

A mark or part of a mark shall not be registered as a trade mark (a) if the use of which is likely to deceive or cause confusion to the public or would be contrary to law.  

Thus, in a situation, for example, where there is a mark called “Chinese White Porcelain” for porcelain not made in China, the geographical name used as the trade mark is deemed to be deceptive since China is known for porcelain and any reasonable man upon looking to the mark might believe that the porcelain is actually originated from China.  

There are several factors that need to be taken into consideration in examining or assessing the distinctiveness of a particular geographical name before it is to be admitted in the register.

a)     The question on whether the trade mark is a  geographical name of the goods’ origin;

b)     The question on whether a reasonable man viewing the marks may actually believed that the goods concerned come from the geographical name used; and

c)     Whether the geographical name used is noted for the goods concerned, need to be satisfied.

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