Unregistrability of marks consisting of exact geographical indiciations

In its recent decision in Bavaria NV v Bayerischer Brauerbund eV the Federal Court of Australia gave, for the first time, judicial interpretation of Section 61 of the Trademarks Act, which deals with the registrability of marks consisting of or containing recognised geographical indications.

Background
The mark in question was a label used by Bavaria NV, a well-established family-owned Dutch brewing company, on its beer bottles. The representation of the mark (picture 1) shows that it contains a number of word and device elements, with one of the prominent word elements being "Bavaria", the company name.

Picture 1

The Bayerischer Brauerbund eV, an association representing the interests of breweries in Bavaria, Germany, is the owner of a collective mark referred to as the Lady Bavaria mark (picture 2):

Picture 2

This mark includes the word elements "genuine Bavarian beer". The association is also active in promoting and protecting the geographical indication “Bayerisches Bier”, which is translated as “Bavarian beer”.

The association opposed the registration of the mark by Bavaria NV in proceedings before the Trademarks Office, the outcome of which was appealed to the Federal Court.

Recognised geographical indication
Under Australian legislation, a geographical indication is a sign recognised in a country as a sign that indicates that the goods originated from a particular location in that country and have a characteristic attributable to that location. The first issue for the court to address was when a sign is "recognised".

The association argued that there were two relevant geographical indications - "genuine Bavarian beer" and "Bayerisches Bier" - both of which were recognised as follows: 

• "Bayerisches Bier" has been the subject of bilateral treaties between Germany and other European countries preventing the use of that sign on beer produced in locations other than Bavaria since 1960; 
• "Bayerisches Bier" was registered as a protected geographical indication by means of European Council Regulation 1347/2001; and 
• The Lady Bavaria mark, incorporating the words "genuine Bavarian beer", was registered as a collective mark in Germany in 1957.

At trial, there was also a suggestion by the association that a sign (eg, "Bavaria" or "Bavarian beer") is recognised if a sufficient proportion of the population of the country believe the sign to indicate the origin and characteristic of the goods.

The court found that for the purposes of the Trademarks Act, recognition requires something formal in nature - long-term use is not sufficient. The court went on to say that, as the sign must be recognised as indicating the origin and characteristics of the goods, mere registration of the sign as a trademark is not prima facie sufficient, as it does not demonstrate that the sign is recognised as indicating the origin or characteristics of the goods. However, in the present case the particulars of registration of the Lady Bavaria mark were sufficient to render the Lady Bavarian mark a recognised geographical indication.

The court also found that the inclusion of "Bayerisches Bier" in bilateral treaties was sufficient for the sign to be recognised. Finally, the court found that the registration of "Bayerisches Bier" as a protected geographical indication was also sufficient for it to be a recognised geographical indication. The court expressly declined to determine whether a protected geographical indication is recognised at the date of registration or date of application, as this question is currently before the European Court of Justice and the answer was irrelevant to the Australian proceedings.

In summary, only geographical indications protected by legislative instrument, the courts, government authorities or bilateral agreements would appear to satisfy the definition of "recognised" under Australian trademark legislation.

Did the mark consist of or contain the recognised geographical indication?
Having found that there were two recognised geographical indications, the court turned to consider whether the mark consisted of or contained either geographical indication. The relevant part of Section 61 states that “the trade mark contains or consists of a sign that is a geographical indication for goods”. The association argued that the court should interpret Section 61 expansively as preventing registration of a mark that contains a sign similar to a geographical indication or a translation of a geographical indication. Bavaria NV argued that Section 61 should be limited to its wording, preventing only the registration of a mark that contains the exact geographical indication.

The court held that:

“S61(1) requires that the geographical indication itself be contained in the trade mark. The section does not refer to a sign that is substantially the same as or deceptively similar to the geographical indication, or refer to an evocation or imitation of the geographical indication.”

It found that as neither of the recognised geographical indications referred to above was contained in the mark, the mark was registrable in Australia.

This decision, while confirming that Section 61 should be interpreted literally and consistently with the legislative intent of the Trademarks Act, has distanced Australian jurisprudence from the European position. The bilateral treaties and EU regulations put before the court by the association not only protect geographical indications, but prevent the use of signs that are similar to or evoke protected geographical indications. In Australia, as a result of this decision, protection of geographical indications is clearly much narrower. For companies with trademarks which may contain a sign similar to a geographical indication, the decision provides some comfort that the mark may be registrable in Australia, even if it is unregisterable in Europe.