Protection of Geographical Names as Trade Marks
We previously covered on registration of geographical indications in Singapore. A geographical indication (GI) is usually owned by a group or association of traders involved in products bearing the relevant characteristics indicated by the GI.? Separate from this will be the protection of geographical names as trade marks. Have you ever wondered why or how clothing brands such as “Patagonia” and “Kathmandu” can be protected as trade marks, when these refer to actual geographical places?
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Generally, the Trade Marks Registry in Singapore is not inclined to allow registration of trade marks that:-
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?solely describe the geographical origin of the goods or services claimed (e.g., “JAPAN” for Japanese sweets); or
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?may deceive the public as to the geographical origin of the goods or services claimed (e.g., “VODKA OF FINLAND” for vodka which did not originate from Finland).
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The simple reason is that a name capable of describing geographical origin should remain open to use by all businesses and not be monopolized by a single business. It is also difficult to regard a geographical name as inherently distinctive, when it is merely a name to describe a particular place.
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That being said, it is not entirely impossible for geographical names to be registered as trade marks, as is the case with “Patagonia” and “Kathmandu”. For instance:-
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?the Registry may allow registration of trade marks consisting of geographical names where? potential consumers and the relevant trade will not reasonably assume that the goods or services claimed originate from that particular place, or where there is no likely connection (now or in the future) between a particular geographical name and the goods or services claimed;
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?for trade mark registration of geographical places which do not cover natural produce or local services, well-known geographical places are less likely to be registrable as compared to obscure or rural places; and
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? trade marks consisting of geographical names may still be registered if they have acquired factual distinctiveness as a result of longstanding and extensive prior use.
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For more information and assessments on registrability of geographical names as trade marks, please feel free to contact Tat Wai Kwok or Kimberly C. at [email protected]. ?