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In the recent Federal Court decision of Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd, the trade marks BOHEMIA and BOHEMIA CRYSTAL (Marks) were invalidated for lack of distinctiveness.

Australian trade mark owners should be wary. This decision demonstrates that trade marks containing references to countries, states or regions can be difficult to maintain without extensive historical evidence of use and reputation.

Background

Bohemia Crystal Pty Ltd (BCP) sold glassware in Australia under trade marks licenced to it by its parent company, Glassexport Co Ltd and filed trade mark applications for BOHEMIA CRYSTAL in 2001 and BOHEMIA in 2003.

BCP alleged Host Corporation Pty Ltd (Host) had infringed the Marks and engaged in misleading and deceptive conduct under the Australian Consumer Law (ACL).

Host sought to revoke the Marks on the basis that they should have never been registered, arguing that the Marks lacked distinctiveness.

Decision of the Federal Court of Australia

His Honour Burley J dismissed BCP’s claims that Host had infringed its Marks or engaged in misleading and deceptive conduct under the ACL. His Honour found the word BOHEMIA, when used in relation to crystal and glassware, would signify to both consumers and traders the place of manufacture of the products.

Likewise, BOHEMIA CRYSTAL was said to likely represent a particular style of crystal and glassware originating from Bohemia. In doing so, His Honour rejected BCP’s expert evidence that the term “Bohemia” referred to a conceptual, mythical country and that the origin of the term “Bohemian” was a reference to Romany people or gypsies.

On the question of whether, at the filing dates of the applications, BCP used the Marks to an extent that had acquired distinctiveness, His Honour found significant deficiencies in the evidence presented by BCP to support distinctiveness.

The Court noted that prior to 1999 the Marks were not used by themselves in advertisements, packaging, stores or showrooms. Rather, the Marks were used as part of a composite logo, which was consistent with BCP promoting itself as a supplier of glassware from a number of sources (such as Bohemia Crystalex, which the relevant composite logo referred to).

His Honour concluded that the Marks failed to demonstrate any acquired distinctiveness as at the date of lodgement  of the Marks and consequently ordered that both Marks be revoked from the Trade Marks Register.

Implications

Businesses seeking to register trade marks containing geographical areas or other generic terms should ensure such marks have acquired distinctiveness through extensive use. This may be achieved by compiling comprehensive records of use of the trade marks in advertising and other promotional material.

Implementing internal processes for tracking trade mark use and maintaining complete and comprehensive records supporting such use, can be an effective way of ensuring the continued protection of your valuable brands, particularly if those brands contain geographical indications.

Should you have any queries about the protection and enforcement of your trade marks, please do not hesitate to contact our Intellectual Property team.

This article was written by Jason Han, Lawyer – Litigation and Dispute Resolution. 

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The need for distinctiveness is crystal clear – Bohemia Crystal’s Australian Trade Marks Revoked

07 May 2018
jason han

In the recent Federal Court decision of Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd, the trade marks BOHEMIA and BOHEMIA CRYSTAL (Marks) were invalidated for lack of distinctiveness.

Australian trade mark owners should be wary. This decision demonstrates that trade marks containing references to countries, states or regions can be difficult to maintain without extensive historical evidence of use and reputation.

Background

Bohemia Crystal Pty Ltd (BCP) sold glassware in Australia under trade marks licenced to it by its parent company, Glassexport Co Ltd and filed trade mark applications for BOHEMIA CRYSTAL in 2001 and BOHEMIA in 2003.

BCP alleged Host Corporation Pty Ltd (Host) had infringed the Marks and engaged in misleading and deceptive conduct under the Australian Consumer Law (ACL).

Host sought to revoke the Marks on the basis that they should have never been registered, arguing that the Marks lacked distinctiveness.

Decision of the Federal Court of Australia

His Honour Burley J dismissed BCP’s claims that Host had infringed its Marks or engaged in misleading and deceptive conduct under the ACL. His Honour found the word BOHEMIA, when used in relation to crystal and glassware, would signify to both consumers and traders the place of manufacture of the products.

Likewise, BOHEMIA CRYSTAL was said to likely represent a particular style of crystal and glassware originating from Bohemia. In doing so, His Honour rejected BCP’s expert evidence that the term “Bohemia” referred to a conceptual, mythical country and that the origin of the term “Bohemian” was a reference to Romany people or gypsies.

On the question of whether, at the filing dates of the applications, BCP used the Marks to an extent that had acquired distinctiveness, His Honour found significant deficiencies in the evidence presented by BCP to support distinctiveness.

The Court noted that prior to 1999 the Marks were not used by themselves in advertisements, packaging, stores or showrooms. Rather, the Marks were used as part of a composite logo, which was consistent with BCP promoting itself as a supplier of glassware from a number of sources (such as Bohemia Crystalex, which the relevant composite logo referred to).

His Honour concluded that the Marks failed to demonstrate any acquired distinctiveness as at the date of lodgement  of the Marks and consequently ordered that both Marks be revoked from the Trade Marks Register.

Implications

Businesses seeking to register trade marks containing geographical areas or other generic terms should ensure such marks have acquired distinctiveness through extensive use. This may be achieved by compiling comprehensive records of use of the trade marks in advertising and other promotional material.

Implementing internal processes for tracking trade mark use and maintaining complete and comprehensive records supporting such use, can be an effective way of ensuring the continued protection of your valuable brands, particularly if those brands contain geographical indications.

Should you have any queries about the protection and enforcement of your trade marks, please do not hesitate to contact our Intellectual Property team.

This article was written by Jason Han, Lawyer – Litigation and Dispute Resolution.