This decision concerned an application for the certification trade mark PARISH OF POKOLBIN for alcoholic beverages in class 33 and various tourism, entertainment, accommodation and restaurant services in classes 35, 41 and 43.
During the course of examination, the Examiner rejected the certification trade mark PARISH OF POKOLBIN on the basis that the PARISH OF POKOLBIN is “part of the land title system under which land holdings were established and registered in the late 1980s and is therefore descriptive of a geographical area in the Hunter Region in New South Wales”. Despite the Applicant’s submissions, the Examiner maintained the ground for rejection and the Applicant requested to be heard.
During the ex parte proceeding, the Applicant argued that that the use of the term “Parish of Polkobin” is somewhat archaic and therefore inherently adapted to distinguish its goods and services. On this point, the Hearing Officer noted that the boundaries of the Parish of Pokolbin are defined with sufficient precision so that the term PARISH OF POKOLBIN is geographical.
The Applicant also argued that the Trade Mark Examiner’s Manual indicates that certification trademarks with geographical signification may be more readily registrable than standard trade marks containing similar geographical content. However, the Hearing Officer pointed out that this Manual serves as a guide only and in any event, does not contain any reference to trade marks that consist of (rather than contain) a geographic reference.
Finally, the Applicant relied on evidence of use of its mark but the Examiner found that the evidence was insufficient to show that the mark has become adapted to distinguish.
The application was refused.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions. You can view the entire month’s summary here.
Principal / Solicitor / Trade Mark Attorney
Litigation Team, Trade Marks Team
Associate / Trade Mark Attorney
Trade Marks Team