Place Name Trade Mark Prevents Confusion

Newspapers periodically contain stories about the restrictions on use of terms that are geographically well known, for example the restriction on the use of the word 'Champagne' to describe sparkling wine. In addition to geographical restrictions, proper names of geographical locations can be registered as trade marks if they are viewed by average consumers as identifying products or services emanating from a single organisation.

In one case, the High Court held that that principle applied to an obscure Balkan area ('SIVEC') where a sought-after type of marble can be found.

The marble, famed for its purity and whiteness, has been prized for centuries. It was used in the construction of the Roman emperor Diocletian's palace and more recently in the Grand Mosque in Abu Dhabi. The town was one of the sources of the stone and a Macedonian company that had mined the seam since the 1950s had registered its name as a trademark.

A UK company also mined marble in the same area and marketed its products using the name SIVEC. The Macedonian company launched infringement proceedings, but its UK rival responded with arguments that the trade mark was invalid in that it did no more than indicate the geographical origin of the marble it sold.

In rejecting the UK company's arguments, the Court found that the trade mark had been validly registered and that there were no grounds for its revocation. The town was so obscure that only those who lived in the area would have heard of it and even purchasers of marble were unlikely to have done so. In those circumstances, its use could not be said to denote the marble's place of origin.

Average consumers in this context meant dealers in marble or architects and designers with specialist knowledge of the material. In their eyes, the town's name had acquired a distinctive character that denoted marble supplied by the Macedonian company alone. An average consumer seeing the name SIVEC would assume it was buying the marble mined by the Macedonian company and the trade mark should be preserved to prevent confusion.