Case: Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55 ; (1964) 111 CLR 511
Outcome: considered
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] HCA 55 ; (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] FCA 175 ; (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] FCAFC 184 ; (2007) 164 FCR 506). In each case, the registration sought was of a word mark that connoted a geographical location. Bavaria NV appears to accept that there are difficulties with the word "Bavaria" being adapted to distinguish its beer but emphasises that Kitto J's observations in Clark Equipment apply to the use of a geographical term where the word is used simpliciter or with no addition except a description or designation of the goods. It submits that its composite trade mark, which uses visual components and other geographical references, is sufficient, as it was in Sports Cafe, to distinguish its trade mark from what may otherwise be a reference to "Bavaria" as the source of the beer. I make the following preliminary observations in relation to the trade mark and to the question whether other persons may legitimately wish to use the word "Bavaria" in connection with their goods because of its geographical reference and whether the trade mark is capable of distinguishing Bavaria NV's goods from the goods of other traders: The trade mark is not just the word "Bavaria" or, put another way, it is not used simpliciter or with no addition save for a description or designation of the goods. The use of the trade mark for beer does not save the word "Bavaria" from carrying its prima facie geographical signification. This is not a case where the goods for which the trade mark is used are remote from the geographical location where those goods are produced and with which the goods are associated (cf. discussion in Colorado at [29] per Kenny J). Bavaria is a place in Germany where beer is produced. This is likely to continue in the future. As at 2005, there were 623 breweries in operation in Bavaria. Other beer makers in Germany may want to use the word "Bavaria" or "Bavarian", on or in connection with their beer, either to signify the brewing style or to indicate that their beer comes from Bavaria. Bavaria NV does not suggest that the word "Bavaria" alone would be registrable for beer. It is unlikely that it would be as, for the reasons given in Clark Equipment , Colorado and University of Oxford , it would not be capable of distinguishing or acquiring distinctiveness for beer. Bavaria NV's beer was named partly in recognition of the fact that there is a style of beer-making associated with, or originating from, Bavaria. Bavarian breweries produce a wide variety of beers, for example blonde and dark beers, pilsener and export beers, wheat beers and diet beers. There is no uniform type of Bavarian beer. The word BAVARIA is prominent in the trade mark. If it is so conspicuously displayed on the label that the fact of its use would suggest that the beer comes from Bavaria, the question is whether the remaining elements of the mark dispel that association ( Re The Registered Trade Mark "Yanx"; ex parte Amalgamated Tobacco Corporation Limited [1951] HCA 28 ; (1951) 82 CLR 199 at 206 per Williams J). Many of the elements of the trade mark, namely the non-word elements such as the heraldry, would not, to the average consumer, indicate a particular country. A coat of arms and old-world emblems evoke Europe. Other brewers in Bavaria use the word "Bavaria" across a label with sprigs of barley and a crest. Examples from brewers who sell into the German market include: