Geographical indicators: Trademarks and place names

By Dan Halliday,

As Liverpool Football Club recently discovered, there are barriers to registering the name of a town, city or other geographical place name as a trademark. Dan Halliday sets out the options and limitations.

Just as a trademark application may be refused if your chosen name is deemed too descriptive of the branded goods or services, so too can be if refused on the grounds of geographical descriptiveness. 

This is for good reason. If you attempt to register a place name for a range of products or services, then there is a presumption that: (1) the relevant consumer will assume the goods/services originate from that place; and (2), if the application were to be successful, the trademark owner would be able to monopolise use of the place name, which should be available to everyone to use. 

As a result, applications for trademarks featuring well-known place names only tend to be accepted if the name is one element of the overall mark. For example, ‘Liverpool Football Club’ and ‘Liverpool FC’, but not the club’s recent failed attempt to trademark the word ‘Liverpool’ alone.

That said, this restriction does not necessarily apply to all geographical names or football clubs. For example, Chelsea FC and Tottenham FC both have registrations protecting their location names as word marks, and it appears that these were more readily accepted despite denoting smaller ‘areas’ of locale, rather than city names.

Potential benefits and pitfalls

There are a number of reasons why you might wish to reference a place in your trademarks. Branding a product or service after the place from which a company originates is often a source of pride, as can be seen in the many “Yorkshire XYZ’ companies (e.g. Yorkshire Tea, Yorkshire Energy, Yorkshire Bank…). Similarly, indicating geographical origin can also be an advantage when it comes to suggesting quality or authenticity to potential consumers.

On the other hand, such registrations – if obtained – will only provide limited protection. Any registration that uses a geographical name as part of the mark does not give its owner the right to automatically take infringement action against a third party on the basis that they have used the place name. Assessments of similarity in oppositions or infringement actions will focus more on whether there are any other shared distinctive elements that make the marks identical or similar. In other words, trademark use may deliver brand recognition, but not necessarily brand protection, as it would still be possible for a third party to also register a trademark that features the place name, for the same goods and services, so long as they used different distinguishing elements. 

Worse still, if you choose a brand that contains additional descriptive elements (for example, ‘The Liverpool Carpet Shop’), you could also find that you’re not the only one using your chosen name and are unable to do much about it.

Tips and tricks for success

If naming your products or services after a geographical place is nonetheless important to your business, then there are a number of ways to support such an application.

As with non-distinctive signs in general, some applications for geographical-based trademarks will also be strengthened if the applicant is able to provide evidence of acquired distinctiveness, as a result of significant use of the name over time. In other words, if the applicant is able to show that the relevant public has started to recognise the trade name as originating from their company, as a consequence of intensive or long-term use, then the application is more likely to succeed. 

Another option could be to register the place name as a figurative trademark, i.e. by applying to register it as a stylised logo. However, the logo would need to contain significant stylisation for it to meet requirements for distinctiveness, and any registration would only enable you to act against infringement of the logo as a whole, and may not give you rights over the geographical element of the mark.

It is also worth noting that there are some regional names protected by geographical indications; although these usually apply to speciality products that have established a significant reputation in a certain locality, such as Champagne, Parmesan and Irish Whiskey. Brand owners should be careful that any mark they conceive does not fall foul of such geographical indications.

Weighing up the odds

Brand owners will need to ask themselves whether using a place name (or indeed any descriptive mark) in their business or product name is really necessary, and assess the benefit of launching such brand names, given the likely difficulties of obtaining trademark protection and the potential limitations of that protection even once in place. 

Where use is still preferred, be sure to ensure that your brand name includes enough distinctive elements to distinguish it in the minds of both the general public and trademark examiners; for example, through a stylised logo or distinctive word element/s to make the sign unique.  

While some businesses have successfully co-opted an unrelated geographical place as the sole name for their business (for instance, Amazon), such registrations are likely to be challenged by the territory in question, as the supermarket Iceland recently found to its cost. Where your application covers a place name that has no relation at all to your business or its products or services, it is worth considering not using the name at all.

If in doubt, please consult with a trademark attorney before beginning any costly branding exercises. For further guidance or support on this and any other IP topic, speak to your Novagraaf attorney or contact us below. 

Dan Halliday is a Trademark Attorney based in Novagraaf's Manchester office. 

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