Principles relating to secondary meanings involving geographic names
75 It has been long accepted that significant hurdles exist for a claimant who seeks to establish a secondary meaning in a geographic name. In Clark Equipment, the High Court considered whether the word 'MICHIGAN', which had been used as a mark for 20 years in Australia was capable of distinguishing the applicant's products. At 513 Kitto J said:
That ultimate question must not be misunderstood. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others.
76 At [514]-[515] his Honour said:
It is well settled that a geographical name, when used as a trade mark for a particular category of goods, may be saved by the nature of the goods or by some other circumstances from carrying its prima facie geographical signification, and that for that reason it may be held to be adapted to distinguish the applicant's goods. Where that is so it is because to an honest competitor the idea of using that name in relation to such goods or in such circumstances would simply not occur: see per Lord Simonds in the Yorkshire Copper Works Case (3). This is the case, for example, where the word as applied to the relevant goods in effect a fancy name, such as "North Pole" in connexion with bananas: A. Bailey & Co. Ltd v. Clark, Son & Morland Ltd. (the Glastonbury Case (1)) (see also the Livron Case (2)), or where by reason of user or other circumstances it has come to possess, when used in respect of the relevant goods, a distinctiveness in fact which eclipses its primary signification. Cf. in the case of a descriptive word: Dunlop Rubber Co.'s Application (3). But the probability that some competitor, without impropriety, may want to use the name of a place on his goods must ordinarily increase in proportion to the likelihood that goods of the relevant kind will in fact emanate from that place. A descriptive word is in the like case: the more apt a word is to describe the goods, the less inherently apt it is to distinguish them as the goods of a particular manufacturer.
77 His Honour concluded by observing at [515]:
The consequence that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person's goods from the goods of others when used simpliciter or with no addition or save a description or designation of the goods, if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there.
78 The principle in Clark Equipment has been followed repeatedly. Courts have shown a distinct reluctance to find that a geographic name has developed distinctiveness such that other traders or persons are prevented from using the name. In Weitmann v Katies Ltd (1977) 29 FLR 336, Franki J said at 342 in relation to the claim for protection of clothing labelled 'Saint Germain':
Since "Saint Germain" is applied to an area in Paris, to some extent it falls within the category of geographical words. The origin of the words "Saint Germain" in my opinion makes it rather difficult for these words to acquire a secondary meaning.
79 In Colorado Group Ltd v Strand Bags Group Pty Ltd (2007) 164 FCR 506, the Full Court found that the word 'COLORADO' as used by the first appellant on items such as backpacks, handbags, purses (even though registered as a trade mark) was not inherently adapted to the appellant's goods from the goods of other persons. At [29] Kenny J said:
I agree in substance with Allsop J that it is likely that another trader will want to use the word "Colorado", legitimately, with regard to his goods, for the sake of the geographical reference which it is inherently adapted to make or the connotations that that geographic reference invokes. Accordingly, I agree in the conclusion of Gyles and Allsop JJ that the word "Colorado" alone is not inherently adapted to distinguish the designated goods or services of the first appellant from the goods or services of other persons.
80 At [128] Allsop J (as he then was) said:
I have difficulty in accepting that the word "Colorado" is inherently adapted to distinguish backpacks, or even bags, wallets and purses. It is not a fancy or made up word. It is the use of a name being a State of the United States of America which has well-known mountains and is a rugged holiday area. In my view, the honest trader could well wish to make use of the signification of the word for geographic reasons - especially in relation to backpacks, or to raise a connotation from the geographic attributes of that State. In my view, the primary judge was wrong to conclude that the word was inherently adapted to distinguish.
81 In Bavaria NV v Bayerischer Brauerbund eV (2009) 177 FCR 300, Bennett J referred to the observations of Kitto J in Clark Equipment Co, observing at [66]:
The question whether a trade mark is adapted to distinguish a party's goods is:
tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.
[Clark Equipment Company v Registrar of Trade Marks (1964) 111 CLR 511 at 514 per Kitto J].
This has led to the rejection of a word of prima facie geographical signification, particularly when it is used simpliciter and where goods of the kind for which it is sought to be registered are produced at the place or in the area (Clark Equipment at 515-516), or if it is reasonable to suppose that such goods in the future would be produced there (Chancellor, Masters and Scholars of the University of Oxford (Trading as Oxford University Press) v Registrar of Trade Marks (1990) 24 FCR 1 at 23 per Gummow J). This is because other traders have a legitimate interest in using the geographical name to identify their goods and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration (Clark Equipment at 514-515). Justice Gummow in University of Oxford came to the view that, if a court is in doubt as to the likelihood of another trader legitimately wishing to use a mark, the application should be refused (at 25). In Clark Equipment, Kitto J held that the word MICHIGAN was not adapted and was not capable of becoming adapted to distinguish earth-moving and other equipment. Similarly, OXFORD was refused for printed publications (University of Oxford) and COLORADO refused for bags (Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506). In each case, the registration sought was of a word mark that connoted a geographical location.
82 The case concerned Bavaria as a trademark for beer and other beverages. At [67] Bennett J said that Bavaria NV 'appears to accept that there are difficulties with the word 'Bavaria' being adapted to distinguish its beer' on the basis of Kitto J's reasoning in Clark Equipment but found that because the trademark contained the reference to 'Holland' and included individual heraldic and declarative elements, the trademark was distinguishable and therefore registration was permissible: see [74]-[75].
83 In Kenman Kandy Australia Pty Limited v Registrar of Trade Marks (2002) 122 FCR 494, Stone J said at [145]:
Signs that are descriptive of the character or quality of the relevant goods or which use a geographical name in connection with them cannot be inherently distinctive because the words have significations or associations that invite confusion and because registration of a trade mark using such words would preclude the use by others whose goods have similar qualities or which have a connection with the relevant areas.
84 Stone J also said at [156]:
… trade marks were held to be inherently adapted not because of any positive content but because they had no associations or significations that prevented them from being inherently adapted to distinguish a trader's goods.
85 Certainly the evidence of Mr Bryson establishes that Thredbo is promoted as being a resort and a place of fun and excitement. However, in the absence of a registered trademark, promotion of a name does not by itself give rise to an exclusive use of that name or badge of origin. In British Sugar PLC v James Robertson and Sons Limited [1996] RPC 281, Jacob J referred to this fact at 302:
There is an unspoken and illogical assumption that "use equals distinctiveness". The illogicality can be seen from an example; no matter how much use a manufacturer made of the word "Soap" as an unsupported trade mark for soap the word would not be distinctive of his goods.
86 In rare instances, such as those considered in J. Bollinger v Costa Brave Wine Co Ltd (No 2) [1961] 1 WLR 277 ('Bollinger') it may be possible to establish a brand name in a geographic region. However the circumstances in Bollinger are entirely different to those now under consideration. In that decision, the House of Lords found that the wine producers from the location known as 'Champagne' in France had developed such a unique reputation as to warrant protection of their goodwill from trades of other areas using the name 'Champagne': see summary in Erven Warnink BV v J Townend & Sons (Hull) Ltd (No 1)) [1979] AC 731 at 745, 747. Lord Diplock referring to the Bollinger decision, observed in Warnink at 747 that it was essential that the product have 'recognisable and distinctive qualities' and have generated the necessary goodwill to warrant protection.