St Andrews loses appeal to register name as a trademark

Tania Longmire
By Tania Longmire December 9, 2018 13:02

The commercial wing of the St Andrews Links Trust has lost its appeal to register the town’s name as an EU trademark for services relating to golf.

The EU General Court in Luxembourgsaid that EU and UK law generally excludes the registration of geographical names as trademarks “where they designate specified geographical locations which are already famous, or are known for the category of goods or services concerned.”

St Andrews Links Ltd – which runs the seven golf courses and is one of the town’s biggest employers – had first hoped to secure the rights with an application to the European Union Intellectual Property Office (EUIPO) back in 2012, but this was turned down in 2016, a ruling that was appealed in 2017.

Official documents outlining the judgement of the court show the Board of Appeal argued that “the expression ‘St Andrews’ referred above all to a town known for its golf courses though not particularly for the manufacturing or marketing of clothing, footwear, headgear, games and playthings.

“The relevant consumer will not establish a link between those goods and services and that expression.”

The EUIPO contended that the EU General Court should both dismiss the action and order St Andrews Links Ltd to pay the appeal costs.

Furthermore, it was stated that the appeal board was entitled to find that there were, in addition to St Andrews Links’ golf courses, “several other major golf courses which lay claim to part of the heritage of St Andrews”, that the mark applied for could not be registered as an EU trademark, and “none of the arguments put forward by the applicant is such as to call in question that conclusion.”

While St Andrews Links Ltd has previously secured registrations around the St Andrews name for a range of products, the court ruled it provided insufficient evidence to prove acquired distinctiveness for services relating to golf.

The court concluded that “the applicant’s single plea in law must be rejected as unfounded and the action thereby dismissed in its entirety.”

Campbell Newell, a partner in Marks & Clerk, said: “Generally, geographical place names should remain free for bona fide usage because positive association between a place name and a mark may potentially influence a consumer.

“There are many Scottish whisky brands named after places, and there isn’t a blanket ban on registering place names, but it is necessary to establish an element of distinctiveness in the way the name is understood by the relevant public, as denoting a brand and not merely a location.”

Marks & Clerk recently found that UK trademark applications originating from Scotland had risen by a quarter in the past year.

 

Tania Longmire
By Tania Longmire December 9, 2018 13:02
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