5 Tips For Registering a Trade Mark Logo With a Geographical Name In It
Under various circumstances, IP Australia may reject your trade mark application. One such reason is if there is a geographical element to the trade mark logo. This is because if you try to register a place name for a group of products or services, there is a good chance that:
- the relevant consumer will believe the goods or services come from that location; and
- if the application is successful, the trade mark owner will be able to monopolise use of the place name, which should be available to everyone.
As a result, trade mark applications including well-known place names are typically only allowed if the name is only one component of the overall mark. For example, the Brisbane Broncos and Sydney Roosters. In this circumstance, the clubs could not trade mark ‘Brisbane’ or ‘Sydney’ alone.
If you are wondering whether you can trade mark a logo with a geographical name in it, this article will explore some key considerations.
Tip #1 Consider the Benefits of a Geographical Name
There are a variety of reasons why you would want to include a geographical reference in your trade mark. The numerous ‘Queensland’ companies, such as Queensland Bananas and Queensland Energy demonstrate how branding a product or service after the place from which a company originates can be a source of pride. When it comes to promoting quality or legitimacy to potential customers, identifying geographical origin may also be advantageous.
Tip #2 Ensure You Have Additional Distinguishing Features
However, even if secured, such registrations will only offer limited protection. Any registration that includes a geographical name as part of the mark does not immediately provide the owner with the ability to sue a third party for infringement because they utilised the place name.
In oppositions or infringement proceedings, similarity determinations will be based on whether the marks have any common distinguishing features. This would make them the same or similar. In other words, trade mark usage may provide brand awareness. However, it does not always offer brand protection. This is because a third party could still register a trade mark that includes the location name for the same products and services. However, the differentiating aspects must be different.
For example, consider a scenario in which you pick a brand with extra descriptive components. For example, ‘The Brisbane Cake Shop’. In this circumstance, you may discover that you are not the only one using your chosen name, and you will not be able to do anything about it.
Tip #3 Demonstrate Acquired Distinctiveness
If naming your products or services after a physical location remains essential to your business, it is not impossible. You may enhance your geographical trade mark application by demonstrating acquired distinctiveness. One such way to do this is through substantial usage of the term over time, as with non-distinctive signs in general. The applicant may be able to prove that the relevant public associates the trade mark with their business. This is usually a result of extensive use. In this circumstance, IP Australia is more likely to approve the application.
Tip #4 Register the Geographical Name as a Figurative Trade Mark
Another possibility is to register the place name as a figurative trade mark. This would include filing an application to register it as a stylised logo. However, in order to fulfil standards for uniqueness, the logo would need to have considerable stylisation. However, any registration would only allow you to fight against infringement of the logo as a whole. It may not grant you rights over the geographical aspect of the mark.
Tip #5 Watch Out For Regional Protections
It is also worth mentioning that certain regional names are protected by geographical indications. However, they often pertain to speciality goods with a strong local reputation. For example, Tasmanian Salmon, South Australian Wine, and New Zealand Cheese. Owners of brands should ensure that any mark they create does not conflict with such geographical identifiers.
Before deciding on whether you should trade mark your logo with a geographical name in it, you should consider:
- Whether there are regional protections;
- If your trade mark is a figurative trade mark (a logo);
- How distinctive your trade mark logo is; and
- What the distinguishing features of your trade mark are.
Frequently Asked Questions
Regional trade mark protection protects regions that have strong local reputations from being exploited from goods and services not from there.
Some geographically based trade mark applications will be enhanced if the applicant can demonstrate proof of acquired distinctiveness as a consequence of substantial usage of the term over time, as with non-distinctive signs in general.