The UK Trade Mark application procedure
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Although it may be tempting to make a reference to the geographical origin of your product as part of your trade mark, the rules of UK trade mark law in this regard are tricky to navigate. Here are some elements to keep in mind when applying for trade mark protection.
The common exclusions from trade mark protection
First of all, marks consisting exclusively of a sign serving to designate the geographical origin of a good or service are inherently unregistrable under UK trade mark law as they can be interpreted as purely descriptive of the characteristics of the goods and services which bear the mark (Trade Marks Act 1994, Section 3(1)(c)). City names, such as “Dublin” or “New York”, for instance, are unregistrable in themselves. A sign will usually be considered to be an unprotectable designation of geographical origin if the geographical name is already famous for or is known for the category of products concerned.
The UKIPO will refuse such marks unless applicants can show acquired distinctiveness which can be difficult to prove (Trade Marks Act 1994, Section 3(1)). For example, the mark “Iceland” from Iceland Foods Limited is successfully registered in the UK on this basis.[1] It is easier to register geographical names which are not already known for the product in question.
Also, the reference to geographical origin in the mark must not be misleading, i.e. untruthful or exaggerated (Trade Marks Act 1994, Section 3(3)(b)). This means that even if your mark does not consist exclusively of a sign indicating geographical origin, the geographical reference in the mark still needs to be appropriate for your product. You cannot for instance mention “Scotland” if your product does not originate from there.
Potential conflict with existing Geographical Indications (GI)
The geographical reference in your mark must not conflict with signs having a geographical meaning which may be protected as designations of origin or geographical indications for a product of the same type (Trade Marks Act 1994, Section 3(4A)).
Geographical Indications (GI) are protected geographical names for products whose qualities or characteristics are directly attributable to their geographical area of origin. Examples include Scotch Whisky, Scottish Salmon, Stornoway Black Pudding and Arbroath Smokies. Only the producers who are operating in the geographical area of origin and who comply with the production requirements, or product specification, are allowed to use the GI as part of their trade mark. In this case, the specification of their trade mark will need to align with the GI product specification.[2]
During the examination of any trade mark, the UKIPO is required to perform searches not only on the UK trade mark register but also on the GI register. Since Brexit, this search is done both on the new UK GI register (for the territory of Great Britain) and on the EU GI register (for Northern Ireland).
Where a mark relates to a product of the same type as a GI and where it conflicts with an existing GI either through direct use, indirect use, misuse, imitation, evocation or any other misleading practices, the registration of the mark shall be refused (Regulation (EU) No 1151/2012 as retained in UK law after 2020, Article 14(1)) . Note that the scope of GI protection is broad which means that even a vague reference to the GI in your mark - be it verbal or pictorial reference - may be sufficient to prevent registration.
Such refusal may not be definitive. Applicants are given the option to overcome the refusal in the event that they have no intention of operating within the geographical location where the GI is in force. To do so, applicants can voluntarily limit the territorial scope of the rights conferred by their trade mark, either to Northern Ireland or Great Britain (Trade Marks Act 1994, section 13(1)(b)). This however cannot apply if the GI in question is protected both in Northern Ireland through the EU scheme and in Great Britain through the UK scheme.[3]
Conclusion
In order to reduce as much as possible the risk of unregistrability and delays with your application, if your mark contains reference to a geographical name, make sure of the following:
- The reference to geographical origin is only part of the mark;
- The geographical reference is not misleading;
- There is no conflicting GI for a product of the same type on the UK GI register (if you only want to protect your mark in Great Britain);
- There is no conflicting GI for a product of the same type on the UK and the EU GI registers (if you want to protect your mark in the whole of the UK); if so, you might want to limit your mark specification to a certain territory only.
- If you are a producer fulfilling the requirements to use a GI, limit your trade mark specification according to the GI product specification.
Author: Alix de La Motte-Broöns
Further advice
For further advice, please contact the trade marks team at Hindles.
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[1] Iceland is registered as UK00002341223. It is worth noting, however, that Iceland Foods Limited failed to prove acquired distinctiveness throughout the European Union and, as a result, both the word mark and the figurative mark “Iceland” were cancelled for the EU territory in 2022. See the decision of the EUIPO Grand Board of Appeal in case R1238/2019.
[2] For example, a Scottish distillery wanting to use the GI “Scotch Whisky” for class 33 “whisky products” would need to limit its trade mark specification in class 33 to “whisky which complies with the regulations of the Protected Geographical Indication Scotch Whisky”.
[3] See the guidance provided by the UK Government on this topic here.