2.4.2.1 The evidence and admissions
94 The parties adduced a significant body of evidence relating to the meaning to be ascribed to the terms "Bohemia" and "Bohemia Crystal". Set out below is a summary of the evidence and my findings in this regard.
The agreed facts
95 There is no dispute between the parties that there is a region in what is now known as the Czech Republic (or, more recently "Czechia") that was known as "Bohemia" and that glassware was produced in that region. Nor is there any dispute as to the meaning of "crystal" in the context of glass. Specifically, the parties agreed to the following facts in an Agreed Statement of Facts.
96 First, that "glass" is a term that includes normal glassware and fine quality glassware known as crystal (which contains lead oxide and other materials to enhance strength and malleability) and other fine quality glassware that contains a variety of additional materials, including lead, to enhance brilliance or other features of the glass. The term "crystal" refers to clear, colourless glass, but not only lead crystal. Accordingly, while there may be a tendency to use "crystal" to refer to high quality glassware, and "glass" to refer to normal quality glassware, the terms may be interchanged to refer to any sort of clear glass product.
97 Secondly, glass and crystal products were manufactured for several hundred years in a region known, prior to 1914, as Bohemia. It is now part of the Czech Republic.
98 Thirdly, from about the 16th century the generic geographic descriptive terms "Bohemian Crystal" and "Bohemian Glass" were used by various manufacturers in the region then known as Bohemia to indicate that their products had been manufactured in that region so as to distinguish them from glass coming from other parts of the world.
99 Fourthly, from 1925 until about the start of World War II (in 1939), the terms "Bohemian Crystal" and "Bohemian Glass" were also used to refer to a particular Art Deco style of highly decorative and colourful glassware.
An admission
100 In [10] and [11] of its Defence to the Cross-Claim, BCP states the following "in further answer" to the Statement of Cross-Claim as a whole:
(b) [BCP] says that prior to about 1975 [each of the Bohemia marks] was not to any extent inherently adapted to distinguish the designated goods of the cross-respondent from the goods of other persons;
The defence goes on to say that because of the extent to which BCP used those trade marks, it did as at the relevant dates distinguish the relevant goods as being those of BCP.
The Australian evidence
101 The parties tendered and draw attention to a number of dictionary definitions of the word "Bohemia" and "Bohemian".
102 The Macquarie Dictionary, 3rd edition, 1997 provides the following:
bohemia … noun a social milieu in which a bohemian atmosphere is prevalent. …
Bohemia … noun a region in the Czech Republic in the western part; in the Middle Ages an independent kingdom, later part of the Austrian Empire (1526 - 1918); …
Bohemian … 1 a person with artistic or intellectual tendencies or pretensions who lives and acts without regard for conventional rules of behaviour…2 a gipsy - adjective 3 relating to or characteristic of bohemians [from BOHEMIA, in medieval times thought of as the original home of the gipsies]
Bohemian Forest …a low forest-covered mountain range on the boundary between the south-western part of the Czech Republic and south-eastern Germany…
103 For the capitalised word "Bohemian" the Macquarie Dictionary, 6th edition, 2013 provides:
Bohemian … 1. a native or inhabitant of Bohemia. 2. The Czech language - adj. 3. relating to Bohemia, its people or their language.
104 For the word "bohemian" the same dictionary provides:
bohemian … 1. a person with artistic or intellectual tendencies or pretensions who lives and acts without regard for conventional rules of behaviour … 2. a Romani person. - adj. 3. relating to or characteristic of bohemians. [from Bohemia, a region in central Europe, now part of the Czech Republic, in medieval times thought of as the original home of the Gypsies]…
105 The Oxford English Dictionary 2nd edition, 2004, provides the following:
Bohemia … 1. A kingdom of central Europe, forming part of the Austrian Empire … 2. Gipsydom … 3. The community of social "Bohemians", or the district in which they chiefly live . …
Bohemian … 1. A native of Bohemia…2. A gipsy. … 3. A gipsy of society; …
Bohemian glass, a fine kind of glass, originally made in Bohemia, in which potash is the alkali used. …
106 The Australian Oxford Dictionary, 1st edition, 1999, provides:
Bohemia … a region forming the western part of the Czech Republic. Formerly a Slavonic kingdom, it fell under Austrian rule in 1526, and by the Treaty of Versailles in 1919 became a province of the newly formed Czechoslovakia. Prague was the capital of Bohemia from the 14th century.
Bohemian … 1. a native of Bohemia. 2. (also bohemian) a socially unconventional person, esp. an artist or writer. adj 1. of, relating to, or characteristic of Bohemia or its people. 2. socially unconventional. …
107 These definitions (which are largely repeated in the other dictionaries which were tendered) indicate that the word "Bohemia" used as a proper noun means a place or region in the place where the Czech Republic is now to be found. In context, it might alternatively refer to a place from where Bohemians (being people from a social milieu in which a bohemian atmosphere is prevalent or persons with artistic or intellectual tendencies or pretensions who live and act without regard for conventional rules of behaviour) come or a place where a bohemian atmosphere is prevalent.
108 In this context BCP relied heavily on the evidence of Professor Moore. It submits that his evidence demonstrates that "Bohemia" in its ordinary signification describes artists or people living an unconventional lifestyle. Professor Moore has spent much of his career as an academic devoted to studying the culture of bohemia and bohemians in Australia. He says that "Bohemian" is a term used to describe "artists, or people living an unconventional lifestyle, accentuating freedom from middle class norms and the work a day world", and "Bohemia" is a place from where Bohemians come. He gives evidence that in the early 1800s it was referred to as a conceptual, mythical country and that the origin of "bohemian" is a reference to Romany people or gypsies, whose nomadism, non-conformity and spontaneity inspired young artists in France to use the term. In Australia the term was picked up within literary and artistic circles in the mid-1800s, where the terms had essentially the same meanings. Professor Moore gives evidence that the words have continued in use in Australia, and in 1997 he was responsible for a documentary produced on the ABC called "Bohemian Rhapsody: Rebels of Australian Culture" in which Australians who had been part of various bohemian sub-cultures over many years were interviewed. They used the words "bohemia" or "bohemian" to describe themselves and those sub-cultures.
109 Host relies on the evidence of several witnesses to contend that, in the context in which the Bohemia marks were used during the relevant period, such use is more likely to indicate that the word "Bohemia" is a reference to geographical origins or a type of glassware from Bohemia.
110 Mr Conley is an antique and 20th century furniture dealer. From about 1995 to 1998 he and his wife operated an antique (that is, over 100 years old) and 20th century furniture and small ware business in London and since 1998 he and his wife have operated a similar business in Double Bay, New South Wales. Throughout his career he has regularly attended antique fairs and markets and he has dealt in vintage and modern homewares, including glass and crystal products. Prior to 2001 he sold vintage, antique and modern items of glassware that he considers to be accurately described as "Bohemian glass". This includes glassware produced since approximately 1857 by the company Moser a.s., based in the area known as Bohemia, whose product is referred to as "Bohemian Crystal". As at the relevant dates he understood "Bohemia", when used in relation to glassware, to be a reference to a region in the Czech Republic renowned for the manufacture of glassware. He also understands (and understood) that "Bohemia" is used to refer to the origin of a particular style of glassware, which has certain stylistic features including cut glass, coloured glass, etched glass and/or certain shapes and styles.
111 Mr Conley explains that as a dealer in glassware in London (1995-1998) and since he began his business in Sydney (1998 to date), when he has identified and labelled glassware from Bohemia for sale, he has used the words "Bohemia" or "Bohemian Crystal" or "Bohemian Glass" to describe them. He gives evidence (which was not challenged in cross-examination) that as at the relevant dates the name "Bohemia" in the glass trade conveys a sign of quality due to the reputation of that region for glass-making. He regards the reputation of the region as an important selling point for customers and, where he sells glassware that is from the region of Bohemia, he advertises its provenance to his customers. Mr Conley exhibits documents from various third party sources, including Miller's Guide (a descriptive guide book of auction valuations and results which contains terminology relevant to the items listed in the book), where the word "Bohemia" or "Bohemian" was used to designate glassware that originated from a geographical region called Bohemia. My examination of the printouts from the guide show a sample of a number of pieces of ornate glassware described in 2001 to be "Bohemian", which (Mr Conley's evidence supports) is used to designate the geographical origins of the work in question. Mr Conley also exhibits a selection of printouts from the website catalogues from the auction house Christie's, which include references to antique or elaborate glassware from Bohemia, or being of "Bohemian" origins.
112 Mr Conley also gives evidence that if he sees the words "Bohemia Crystal" in relation to the relevant products, they convey to him that it is manufactured in the region of Bohemia in the Czech Republic, that it probably has certain stylistic characteristics, that it probably contains lead oxide or a modern substitute and that it is probably quite heavy.
113 Mr Cook gives evidence to similar effect to that of Mr Conley. He is an antique dealer who has been working full time in his family business, Grafton Galleries, since 1986. Mr Cook has been a member of the committee of the New South Wales chapter of Australian Antiques and Art Dealers Association (AAADA), the leading industry body representing Antique and Fine Art dealers in Australia, for over 20 years and has since 2013 been the president of the New South Wales chapter. One of the tasks of AAADA members is to vet descriptions of the wares exhibited at its antiques fairs to ensure that they are accurate.
114 According to Mr Cook, the region of Bohemia in the Czech Republic has been known since at least the 18th century as a producer of glass and that reputation has continued into modern times. He considers that traditional or "classic" glass and crystal from Bohemia has stylistic elements such as ornate craftsmanship, coloured glass, multiple layers and cut glass. However, glassware from Bohemia does not have to have these features. Where Mr Cook ascertains that an item that he is selling is from the Bohemia region, he gives its attribution as "likely to be from Bohemia" (noting that identification of a piece's origin is not an exact science). He exhibits definitions from books (such as "An Illustrated Dictionary of Glass" (Harold Newman, Thames and Hudson, 1987) and "The Antique Buyer's Handbook for Australia" (Peter Cook, Reed Books, 1988)) which contain references to "Bohemia" and "Bohemian glass".
115 Mr Cook gives his opinion that as at the relevant dates "Bohemia", when used in connection with glass and crystal, refers to a geographical location in the Czech Republic which is well known for manufacturing glass and crystal. When the words "Bohemia Crystal" are used in connection with glass and crystal, they have the same meaning, "crystal" being a reference to a type of glass containing lead. He gives evidence that he has seen many examples of glassware described as "Bohemian" and "from Bohemia" and has done so in relation to products in Grafton Galleries since the mid-1970s.
116 Mr Edwards has experience as a senior curator of the National Gallery of Victoria and a curator and director of the Geelong Art Gallery. He has a specialist interest in glassware and crystal. As at the relevant dates he was aware that "Bohemia" is a region associated with the present Czech Republic that, in his opinion, is celebrated worldwide for its glassware which is made with highly refractive crystal glass that is coloured - most notably in a rich ruby colour - and that is elaborately cut or engraved. He has used that word to describe the region from where such glassware originated in the context of his work as a curator and an author of works about glassware. Mr Edwards refers to a number of works, including his own book "Art of Glass: Glass in the collection of the National Gallery of Victoria", which was published in 1998, and refers to glass from the Bohemia region.
117 In its submissions, BCP emphasises the highly specialised knowledge of Mr Edwards as being irrelevant to the present inquiry. I accept that his evidence is less useful than that of Mr Cook and Mr Conley in developing an understanding of the ordinary understanding that traders and consumers would have of the meaning of the Bohemia marks. However, it does provide further historical verisimilitude for the matters to which those witnesses refer.
118 Mr Sullivan is, of course, the second respondent and also a trader in modern glassware. He is able to give relevant evidence going to the question of the perception of those in the relevant field, being purchasers and traders dealing in contemporary glassware. He has traded in such goods in Australia as a vendor, importer and distributor since before 2001. His evidence is that as at the relevant dates he was aware of Bohemia as an area within the Czech Republic from where glassware was manufactured. He has attended the Ambiente Trade Fair in Frankfurt since 2002 and has since then been aware of manufacturers of glassware in the Czech Republic who use the word Bohemia in their names and who describe their product as "Bohemia" or "Bohemia Crystal". I am satisfied that this reflects the knowledge of Mr Sullivan at the time and that it may be representative of knowledge of similar traders in Mr Sullivan's position. To this end, I have also had regard to the fact that the objective evidence of the list of manufacturers of glassware who present their wares at the Ambiente Fair demonstrates that at least from 2006, many who originated in the Czech Republic used the word "Bohemia" in their trade names. A number of those named were also named by Mr Sullivan. I find that at least some of these exhibitors listed, and probably many, were present at the trade fair before the relevant dates. This is supported by the evidence of the Czech witnesses, to which I refer above. Mr Hesse's evidence is that he too attended the Ambiente Fair and was (naturally enough) aware of the manufacturers. Indeed, BCP imported goods manufactured by two of them, being Crystalite and Crystal BOHEMIA a.s (also known as Sklarny Bohemia).
119 Mr Sullivan considered Bohemia as a geographical region to be a desirable source of origin for glassware that is and was reputed to be of a high quality.
120 Mr Hesse also gave evidence relevant to this subject. He has been intimately involved in the promotion and sale of glassware from the Czech Republic since before 1980. In this context, I note that Mr Hesse has for a long time had close personal ties to BCP, as an employee for BCP from 1980 and a director of that company from 1990. Bohemia Trading is the sole shareholder of BCP and Mr Hesse is its principal shareholder through shares held by a trust company. In a number of respects I found his evidence to be somewhat coloured by his desire to ensure that BCP succeeded in this litigation. In general I consider that he had an acute understanding of the issues in this case and found it difficult to distance his role as a witness from his position as an instructor and part-owner of the company. In spite of some self-serving statements, the following aspects of his evidence provide strong indications that "Bohemia" was regarded, in its ordinary signification, by Mr Hesse before the relevant dates to refer either to a geographical region in the Czech Republic known for its glassware or to glassware of a "Bohemian" style that is from Bohemia, or both.
121 The shares in BCP were until 1999 owned by Skloexport, a state-owned company within the CSSR. The nominal shareholders of Skloexport were, according to Mr Hesse, state-owned enterprises engaged in the production of glassware in the CSSR such as factories, manufacturers and mould suppliers. Skloexport's role was to export glassware from the CSSR. BCP was set up as a vehicle to distribute glassware from the Czech Republic, taking over that role from an individual who had been Skloexport's selling agent until then.
122 In 1962 and 1978 the 034 and 701 marks were (respectively) registered by Skloexport in classes of goods described as being glassware of all kinds "being products of Bohemia, Czechoslovakia" or "produced in the Bohemian region of Czechoslovakia". A similar description was applied to the class of goods for the 332 mark when it was registered in 1980. These limitations indicate, insofar as Skloexport was concerned (and, I infer, BCP), that Bohemia was a region within the former Czechoslovakia and that the goods sold under those trade marks were produced in that region.
123 In his oral evidence, Mr Hesse sought at times to deny that he was aware of a region within the Czech Republic called Bohemia, either in the present day or before the relevant dates. He sought to draw a distinction between political boundaries and regions known less formally, and appeared to adhere to a view that only the former would be relevant when considering what the word "Bohemia" might mean to consumers or traders. That resistance found expression in a number of answers given in cross-examination where he protested that he did not know where the region of Bohemia now is to be found and discounting the relevance of historical usages of the expression, even uses that he acknowledged were as recent as World War II (the "Protectorate of Bohemia"). However, ultimately Mr Hesse acknowledged that he was aware of a geographical region known as Bohemia that is to be found in the Czech Republic.
124 It is of significance that on 26 June 1992 Mr Hesse signed the Registered User Agreement (summarised in section 1.5 above) on behalf of BCP, whereby BCP was made the sole registered user in Australia in respect of the Skloexport trade marks. The schedule to the agreement records, in respect of each of the 034, 701 and 332 marks, that the goods in respect of which they are registered are goods produced in "Bohemia, Czechoslovakia" or the "Bohemian region of Czechoslovakia". The Registered User Agreement was signed by Mr Hesse at a time when he was not attuned to the issues in the present controversy, and I consider that the statements of geographical signification in that document more accurately reflect the view that he held then and held at the relevant dates, namely that Bohemia was a recognised geographical region from where glassware of repute was produced. I further find that the aims of BCP, under licence from Skloexport, included the promotion of the region of Bohemia as a source of the quality glassware that it sold.
125 In this regard, the terms of the Registered User Agreement made it an obligation on the part of BCP as sole Australian distributor to promote that region as the source of its glassware, by reference to the marks to which the agreement refers. It is apparent that BCP sought to fulfil its obligation by the use of those trade marks in relation to products from that source. When Mr Hesse was asked questions about the application of the following stickers to products by BCP since 1981, he gave the evidence set out below (emphasis added):
And in these examples the use of Bohemia are descriptive, in the sense that they are telling the consumer of the quality and excellence of the product coming from the Czech Republic, aren't they? ---Yes, that's right, that's the pearl necklace one that you referred to previously.
That's right. But in these examples, the Bohemia describes the quality and the high - high quality of the product that comes from the Bohemia region in the Czech Republic, doesn't it? --- Yes. It does.
And that's - the - what the applicant did, as a faithful distributor of these products for all the years up until 1999, was to do that: was to educate the Australian consumers that they were selling high-quality lead crystal of fine quality, evoking the tradition of the Bohemia as a source of glass and crystal manufacture? - Quality. Yes
And Bohemia as reinforcing that quality by - ? --- Correct
By reference to its origin? --- The Czech Republic. Yes.
And the - until 1999, it was all about the - reinforcing a connection with the motherland, the Czech Republic, and still is, really, isn't it? --- Yes. It is.
And that's - that connection is reinforced by the presence of the word Bohemia? --- It's by the presence of many things, including commitment and long term regard.
Including the word Bohemia? --- Including the word Bohemia.
126 In 2014 Crystalite applied to register a trade mark in Australia (via the Madrid Protocol based on an application made in the Czech Republic in 2010) in relation to inter alia glass products in class 21 and glass processing services in class 40 for the words rendered in the following logo form (2010 Crystalite mark):
127 Also in 2014 Crystalite applied to register a trade mark in Australia (via the Madrid Protocol based on an application made in the Czech Republic in 2014) in relation to the same glass processing services in class 40 for the words rendered in the following logo form (2014 Crystalite mark):
128 I collectively refer to the 2010 Crystalite mark and the 2014 Crystalite mark as the Crystalite marks. BCP and Bohemia Trading filed a Notice of Opposition to the registration of the Crystalite marks and on 4 April 2016 lodged a Statement of Grounds and Particulars which included the following in relation to grounds of opposition filed under s 41 (emphasis added):
[s 41] … For example, Trade Mark Application No 1625447 consists of the words CRYSTALITE BOHEMIA CZECH REPUBLIC. These verbal elements are descriptive of goods having a crystal or crystal-like composition or appearance from the Bohemia region of the Czech Republic, or services relating to crystal and glassware products in that region.
… The emphasis of the visual representation is the geographical indication of BOHEMIA.
129 A s 43 objection was also raised. In the Statement of Grounds and Particulars it states "Trade Mark Application No. 1648929 contains contradictory geographical indications, namely BOHEMIA and CZECH REPUBLIC referring to the Czech Republic and CERVA referring to a place in Italy. The use of this mark would be likely to deceive or cause confusion as to the geographical origin of the goods or services associated with the mark".
130 Mr Hesse freely acknowledged that it is he who gives instructions to solicitors on behalf of BCP, that he signs off on communications with the trade mark office and that he instructed BCP's solicitors to oppose the marks on these grounds. I find that the paragraphs just quoted accurately reflect the view held by Mr Hesse as to the meaning he attributes to the word "Bohemia" in relation to the relevant goods as at 2016, when that meaning is divorced from considerations of the current controversy and when that word is not considered in the context of the effects of any registration by BCP. To the extent that he sought, after being confronted with this material, to distance himself from its content, I reject that evidence.
131 Mr Hesse also gave evidence that in his view the words "Bohemian glass" refer to red-coloured glass that was known for its use of cutting, painting and etching, that is, as a description of a style of glassware. After being shown images from BCP's current website he gave the following evidence:
When you say things like "crafted in the factories of the Czech Republic" and "still decorated using traditional techniques", that's intended to evoke the Bohemian glass traditional manufacture, isn't it? -Yes, it is.
And that has been known for centuries? --- A lot of those technologies…available centuries.
132 BCP also adduced evidence from Mr Francis on this issue. The evidence of Mr Francis is that since 2000 he has been employed by Peter's of Kensington as a retail buyer based in a shop in Kensington, Sydney. In a letter of instruction he was informed that the solicitors for BCP acted in relation to the Bohemia marks and asked to indicate what he understands "…the terms 'Bohemia' and 'Bohemia Crystal' to mean to buyers of glass and crystal ware". He is responsible for buying merchandise in the categories of tabletop goods (which includes glassware), as well as cutlery and travel goods, which includes buying across tens of thousands of product lines. Mr Francis has attended the Ambiente Trade Fair in Frankfurt annually since 2002 and in the course of cross-examination recalled seeing several manufacturers at that fair selling glassware under or by reference to names that include the word "Bohemia". His observation in that context is that the "brand name" Bohemia stands out when walking past the trade stands at the fair. His reference to "brand name" was a reference to the word "Bohemia" as it appeared in the names of several different manufacturers, none of which was BCP.
133 In his written evidence, Mr Francis states that he is familiar "with the brands 'Bohemia' and 'Bohemia Crystal'" (meaning, it seems, the Bohemia marks) and that he has seen them since about 1991, when he worked for Royal Doulton in a sales role. Peter's of Kensington does not stock those brands at present, although he recalls that it did stock a range of plain vases (he purchased about 12 to 18 pieces of each item) from around 2007 - 2008. Mr Francis states that he spends a number of hours each day on the shop floor interacting with customers and that about once a month since he started working at the store he has had a customer asking "do you stock Bohemia products?" or "do you stock Bohemia Crystal products?". He does not recall a customer asking for products from a place or region called Bohemia. He does not recall ever seeing glassware that was identified on the product or packaging as having been made "in Bohemia" or as being from "Bohemia". I return below to consider the relevance of this evidence.
134 Host also adduced evidence of the content of various travel publications dated from 1995 to 2003, available in Australia, that indicate that Australian visitors to the Czech Republic can purchase "Bohemian Crystal" and "Bohemian Glassware" in the Czech Republic.
The evidence of the Czech witnesses
135 Host adduced evidence of the current and historical uses made by several manufacturers based in the Czech Republic of the word "Bohemia" in the context of glassware. This evidence was primarily said to be relevant to the question of inherent capacity to distinguish, and to signify that traders, with no improper motive, would desire to use "Bohemia" and "Bohemia Crystal" with respect to their goods for the sake of the signification which these words possess. I accept that evidence of this type can be relevant to whether the words in issue are fanciful or arbitrary terms, like NORTH POLE for bananas, or truly descriptive. I also accept that it may assist the Court in determining whether honest traders trading or contemplating trading in Australia might wish to use those words to describe particular products, and in determining the extent of the common usage of "Bohemia"; see Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367; (2010) 191 FCR 297 (Yarra Valley) at [200].
136 Mr Cerva gives evidence that since 2009 his company has made glassware and traded in the Czech Republic under the name "Crystalite Bohemia s.r.o", a name that he chose in order to convey that the glassware his company manufactures comes from the region known as Bohemia. His company operates manufacturing facilities in the Czech Republic, employing over 950 people. Glassware produced from those facilities accounts for an annual turnover of about 37.5 million euros. His company exports to over 80 countries around the world but no longer Australia, although it would like to do so. In his experience the word "Bohemia" and variations like "Bohemian" are used by manufacturers from all parts of the Czech Republic to describe where their glassware is from, including in popular tourist destinations like Prague. His evidence is that the Bohemia region is all of the Czech Republic, and the word Bohemia is an older form of word used to describe that area, like Galicia or Hispania are older forms of words used to describe France or Spain. Although the political boundaries on a map in evidence identify regions as "South Bohemian Region" and "Central Bohemian Region", these boundaries do not denote the broader area known from ancient times as "Bohemia".
137 Mr Kidric gives evidence that from 1993 the business now operated as Bohemia Jihlava was operated by the company Jihlavske Sklarny Bohemia a.s. At some time before 2002, Skloexport, which was the sole exporter for the business (and other glass-making businesses in the Czech Republic), ceased to operate, and therefore ceased its role as Bohemia Jihlava's exporter. In about June 2002 that business went into liquidation and was taken over by Burson Properties a.s., before it began its current form in 2009.
138 Bohemia Jihlava produces decorated glass objects from glass purchased from other manufacturers. The facilities of the company are not all located within one of the areas identified in a map as Bohemia (the political status of the boundaries and regions in the map upon which the Czech witnesses were cross-examined was not established). Nevertheless, his evidence is that he considered it appropriate to call the glass products sold by his company by reference to the words "Bohemia Crystal" or "Bohemian Crystal" as it identifies where the crystal is made. I accept that Mr Kidric considered this an apt description, that he considers the description to connote products from anywhere in the Czech Republic and that the products sold by reference to that region denote that it is of a good quality. Mr Kidric states that because it is a selling feature and informs his customers of the origin and quality of the goods, it is important to him that he is able to use the words "Bohemia Crystal" and "Bohemia" in relation to Bohemia Jihlava's products.
139 Further, Mr Kidric exhibits a copy of a document issued by the world intellectual property organisation (WIPO) that states that "Bohemia Glass" and "Bohemia Crystal" are registered as appellations of origin pursuant to the Lisbon Agreement for the Protection of Appellations of Origin and their international Registration (Lisbon Agreement) in relation to areas of production known as "Bohemia, Moravia".
140 Mr Kidric gives evidence that on 5 May 1998 and 4 September 2002 Bohemia Trading (a company controlled by Mr Hesse and the sole shareholder of BCP) filed trade mark applications in Australia (subsequently granted) for two composite marks used by Bohemia Jihlava in the Czech Republic for glassware. Mr Kidric states that in about 2011 BCP and Bohemia Trading commenced proceedings against one of Bohemia Jihlava's customers, Mikassa Homewares Chatswood, alleging infringement of the Bohemia marks and the Bohemia Jihlava marks as a result of importing Bohemia Jihlava packaged and branded products into Australia.
141 Mr Barta has been in the Czech glass business since 1995. He gave evidence about the extensive use of the word "Bohemia" by companies in the Czech Republic to designate the place of origin of goods that include glassware. He identified over 20 glass-producing entities located in the region that he considers to be Bohemia that, before October 2001, used the word "Bohemia" in their trading name or registered trade marks, and over 60 which, before October 2001, had trade mark applications or registrations for marks including that word.