Walk into any wine retailer and you'll be confronted with any number of
wines bearing the name of some or other place as a brand. Brands such
as 'Swartland', 'Namaqua' and 'Robertson Winery' come to mind.
As Eben Sadie once said: “... the notion of sense of place is what wines are about and the reason they have fascinated mankind since the very inception”.
Using a place name as a brand is one thing, but can you secure a monopoly over the name through registration of a trade mark? Of course you can, but, and it’s a rather big but, it can be quite tricky. The Trade Marks Act (“the Act”) provides that a trade mark which consists exclusively of a sign or indication that may serve to designate the geographical origin of the goods or services in question shall not be registered. So, in a decision handed down by the Supreme Court of Appeal, the court found that the trade mark Century City was the name of a geographical place and that the public would perceive the mark as designating the geographic origin of some of the services in relation to which the mark was registered (Century City is a sprawling, tragically Tuscan development in Cape Town). The court accordingly ordered the revocation of the mark in relation to those services.
So why, you may ask, does the law generally prevent the registration of place names? Well, the answer may be best illustrated with an example. In 1948 Warner Brothers Studio threatened the Marx Brothers with litigation if they did not change the name of their planned movie “A Night in Casablanca”. Groucho Marx would have none of it and wrote the following to the Warners, which we found instructive:
Dear Warner Brothers,
Apparently there is more than one way of conquering a city and holding it as your own. For example, up to the time that we contemplated making this picture, I had no idea that the city of Casablanca belonged exclusively to Warner Brothers...
It seems that in 1471, Ferdinand Balboa Warner, your great-great-grandfather, while looking for a shortcut to the city of Burbank, had stumbled on the shores of Africa and, raising his alpenstock (which he later turned in for a hundred shares of common), named it Casablanca.
... Even if you plan on releasing your picture, I am sure that the average movie fan could learn in time to distinguish between Ingrid Bergman and Harpo. I don't know whether I could, but I certainly would like to try... (quoted from the judgement of Davis J in the Century City High Court decision).
So it is said that the relevant provision of the Act serves a public interest by permitting all to use such names freely and preventing them from becoming the exclusive preserve of any single entity.
How then can one register a place name as a trade mark and have those rights be enforceable against others? Firstly, the prohibition only applies where the relevant place has an association in the minds of the public with the goods or services in respect of which registration is sought. So, an oft quoted example is the trade mark London for gin as opposed to Bloemfontein for gin. It is said that London has an association with gin, whereas Bloemfontein does not. The word Bloemfontein would therefore theoretically be registrable in respect of gin, whereas London would not. Although quite why one would want to associate one’s product with Bloemfontein is beyond me.
Secondly, the prohibition is subject to the proviso that if the place name has been used to such an extent (through sales, marketing etc) that it has become distinctive of the business that has been using it, i.e. that the mark has become associated in the minds of the public with the business in question, then it will be registrable. This is in fact what happened in the recent decision concerning the well-known Swartland trade mark registered in class 33 (which includes wines). There, Swartland Winery sued another wine producer who was using Swartland as a trade mark. That other producer claimed that the registered Swartland mark was liable to revocation because it was in breach of the prohibition under discussion. The court however held that the Swartland mark had been used for such a long time and so extensively that it had become distinctive of Swartland Winery. The court refused to revoke the mark and Swartland Winery succeeded.
Of course even if one is able to register a place name as a trade mark, others will still be permitted to use it to describe the geographic origin of their goods. They just won’t be able to use it as a trade mark/brand name. In the Swartland case for instance, the defendant attempted to argue that it was merely using the Swartland mark to describe the geographic origin of its wine. Au contraire! said the court, which found that because the wording of Swartland was so prominent, it was being used as a trade mark and not as a description of geographic origin (watch out for our next article, which will deal with graphical marks and their use in more detail).
Trade mark law is not the only area of law that may be applicable to the use of place names. For instance, the Liquor Products Act generally prohibits the use of the name of any area designated in terms of the Wine of Origin scheme or any area where viticulture is practised and which is generally known to the public, without the authorisation of the Wine and Spirit Board. There is, however, a savings provision qualifying this prohibition – if the mark was used prior to 1 July 1990, the prohibition will not apply.
All things considered, it’s not easy to register a place name as a trade mark, but it can and is done and we’ll gladly assess your particular case, for a modest fee of course. Please contact me at firstname.lastname@example.org / +27 (0)21 880 5160 if you’d like to discuss your case.