Crystal from Bohemia has a long history of recognition for its high quality of craftsmanship and innovative designs. Chances are you’ve probably noticed it gathering dust on your grandma’s mantelpiece. However, in Australia, it has been involved in a trade mark tussle resulting in the marks BOHEMIA and BOHEMIA CRYSTAL being struck off the Register.
Bohemia Crystal Pty Limited (BCP) had registered the trade marks BOHEMIA and BOHEMIA CRYSTAL (the Marks) in relation to various glassware and crystal products in the early 2000s. It alleged that Host Corporation (Host) infringed these registrations through its use of marks, including BANQUET BY BOHEMIA in relation to supply of glassware to the hospitality industry.
Host successfully cross-claimed for revocation of the Marks arguing that:
- they were not capable of distinguishing as they
comprised a geographic name or a geographic
name and a descriptor; and
- there was insufficient evidence of use before the
filing dates to establish the Marks distinguished
Following recent authority, the Court applied the test for determining whether a sign is inherently adapted to distinguish. It was not, as BCP had submitted, what ordinary consumers would consider the mark to mean. Rather, it was the meaning or the ‘ordinary signification of the words’ considered by ordinary consumers and traders.
The Court dismissed BCP’s evidence that ‘Bohemia’ referred to those living an unconventional artistic lifestyle. On the evidence, it found the word ‘Bohemia’, when used in relation to glassware, would ordinarily signify to traders, and to many consumers, a region where glassware is made. It was not disputed that glassware was made in the region, known as Bohemia, for many years before World War 1 and that this tradition continues in that region, now part of the Czech Republic.
Having found the Marks had no inherent adaptation to distinguish, the Court considered whether they had become capable of distinguishing through use. BCP’s evidence was found to be deficient on this point and its registrations invalidated as:
- a lot of the evidence showed use of a composite
mark, rather than the Marks as applied for;
- there was a lack of evidence prior to the filing
- it was vague and general.
However, if the Marks had been valid, the Court considered Host’s use of Bohemia would infringe BCP’s registrations and that the defence under s.122(1) (b) was not made out. Host argued it had used the marks in good faith to denote ‘Bohemia’ as the place of origin of the goods. The Court did not consider the words ‘by Bohemia’, (unlike ‘from Bohemia’) to denote a geographical location.
This case illustrates that adoption of a mark incorporating a geographical reference or other nondistinctive element can be problematic. It is also a reminder that evidence of use must be clear, specific and from the relevant period.