Wrays’ Principal and Chair of the trademarks committee for Australia’s Institute of Patent and Trademark Attorneys, Jennifer McEwan shared her insights with ABC journalist, Jano Gibson into what constitutes an iconic trade mark in different countries.
Bondi Beach is at the centre of an international trade mark dispute between Sydney cosmetics company, Bondi Wash and multinational fashion giant, Abercrombie & Fitch. The US retailer is the registered owner of the ‘Bondi Beach’ trademark in the US for a range of products, including beauty lotions, body sprays and fragrances, despite having no presence in Australia. When Sydney company Bondi Wash applied to trademark its name in the US, it was prevented from doing so because of the similarity to Abercrombie & Fitch’s existing rights.
“There are different interpretations of what constitutes an iconic mark in different countries, said Jennifer McEwan
“A mark may be iconic in Australia or other countries but not the USA,” she said.
“Under USA law, geographic names can be refused registration if its geographic location is of primary significance to the relevant consumers in the USA.
“Therefore, it seems the USPTO examiner took the view that [Abercrombie’s] Bondi Beach and Bondi Beach Club marks were not primarily of geographic significance to the relevant consumers in the USA.”
She says the law is different in Australia.
“Yarra Valley for fruits or wine, or even Bondi Beach for clothing, are not registerable unless evidence of extensive prior use of the trademark is provided during the examination process, or if other distinctive elements are added to the name; for example, a logo.”
Click here to read the full article by ABC journalist, Jano Gibson.