Landmarks and trade marks08 August 2017
Australian companies can find it difficult to trade mark their brand names in other jurisdictions, as Sydney-based cosmetics and household cleaning products manufacturer Bondi Wash found out when it applied to have its name trade marked in the United States. It didn't expect fashion giant Abercrombie & Fitch—the registered owner of the "Bondi Beach" trade mark in the US for a range of goods, including fragrances, body sprays and body lotions—to be standing in its way.
Bondi Wash successfully trade marked its name in Australia, but its request for extension of trade mark protection in the US was rejected on the grounds that it is too similar to Abercrombie & Fitch's existing trade mark. Bondi Wash attempted to have the trade mark approved by the United States Patent and Trademark Office (USPTO) by alleging that Abercrombie & Fitch was no longer using the existing trade mark, however Abercrombie & Fitch disputed this and requested that Bondi Wash's petition for cancellation be dismissed. Bondi Wash withdrew its petition in the US in June 2017 and is instead seeking to file the trade mark under separate classes, including "household disinfectants".
An uphill climb for the Aussie battlers
Under current US law, trade marks associated with geographic locations can be refused if the location in question is of significance to the relevant consumers in the US, like the Grand Canyon or Central Park. In this instance, the USPTO examiner has taken the view that Bondi Beach, an Australian landmark, is not of significance to US consumers and therefore can be trade marked.
In 2014, a US carpet company obtained the trade mark "Uluru", which means no other company operating in the US could use it—a pretty significant problem for smaller Australian companies looking for international growth and recognition, who would be faced with expensive and drawn-out legal proceedings.
Comment below with your thoughts on trade marking iconic international locations—does this act as a significant barrier to cross-border expansion?