Justice Burley of the Federal Court of Australia has handed down his decision in Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd  FCA 235.
The case involved a dispute concerning the validity and infringement of two registered trade marks owned by Bohemia Crystal Pty Limited (BCP), for the word marks “BOHEMIA” and “BOHEMIA CRYSTAL” (the Bohemia marks) in relation to glassware and crystal. The Bohemia marks were held to be invalid and cancelled as they were incapable of distinguishing BCP’s glassware and crystal from those of others. His Honour nonetheless went on to consider the infringement case and in obiter decided that if the marks were valid, Host Corporation Pty Ltd’s (Host) use of the phrases “Banquet Crystal by Bohemia” and “Czech Crystal by Bohemia” were infringing uses. However, the descriptive uses of the marks were considered to be noninfringing use.
This case is a timely reminder of the difficulties of maintaining and enforcing trade marks which consist of or contain geographical locations. It also highlights the importance of filing verifiable and dated evidence relating to the trade marks in issue (and not of related, composite trade marks).
Bohemia is an area within the Czech Republic where glass and crystal products have been manufactured for hundreds of years.
BCP was incorporated in 1975 as a subsidiary of a Czechoslovakian government entity known as Skloexport, which was responsible for the export of all glass and crystal products made in Czechoslovakia (which later became the Czech Republic).
Prior to 1999, BCP sold glassware into Australia under the following trade marks licensed to it by Skloexport (collectively the Skloexport marks):
In 1999, BCP took assignment of the Skloexport marks.
On 5 October 2001 and 2 May 2003, respectively (“the relevant dates”), BCP filed the applications for BOHEMIAand BOHEMIA CRYSTAL for glassware and crystal.
Both marks were rejected during examination because they were not sufficiently distinctive to qualify for registration. BCP overcame that objection by filing extensive evidence of use and the marks were accepted on the basis that they did in fact distinguish BCP’s goods from those of other traders.
The dispute – is the term “bohemia” purely geographically descriptive?
Host is an importer and supplier of catering goods and equipment. In 2015, it became the exclusive distributor in Australia of a range of crystal products marketed in more than 30 different countries as “Banquet Crystal by Bohemia“.
BCP alleged that conduct by Host, including the publication of advertising catalogues in 2015 and 2016 referring to the Banquet range, and the product packaging used by Host for that range, infringed the Bohemia marks.
Host asserted that the Bohemia marks were invalid under s 41 of the Trade Marks Act 1995 (Cth).
The validity of the Bohemia marks
In order for a trade mark to satisfy the requirements of s 41, it must be capable to distinguishing the applicant’s goods or services from those of other traders. In this respect, at the relevant time, the assessment under s 41 involved an analysis of:
- Firstly, whether the relevant mark is inherently adapted to distinguish, in which case it will be capable of distinguishing the applicant’s goods or services (s41(3);
- if it is held that the mark is not inherently adapted to distinguish, the question becomes whether the mark is to any extent adapted to distinguish, in which case the applicant must show that the mark is, or will become, capable of distinguishing its goods/services from those of others through use or intended use. (s41(5);
- if a mark is not to any extent inherently adapted to distinguish, the applicant will need to establish the distinctiveness of the mark entirely through evidence of use and show that the mark is in fact distinctive of the applicant (s41(6).
Host contended that the Bohemia marks were not to any extent inherently adapted to distinguish the goods of BCP from the goods of other traders and did not in fact distinguish the goods of BCP from the goods of other persons.
BCP accepted that Bohemia may be used as a geographical term, but contended that the evidence it had filed demonstrated that, to the Australian public, the word meant “an artistic or unconventional lifestyle” and therefore was not descriptive of its glassware and crystal.
BCP submitted that the Bohemia marks were inherently adapted to distinguish in accordance with s 41(3), or to some extent inherently adapted to distinguish under s 41(5). Alternatively, BCP contended that the evidence it filed of its longstanding and high volume usage demonstrated that the marks did in fact distinguish BCP’s goods from those of others (under s 41(6)).
The Bohemia marks were not inherently adapted to distinguish
The parties agreed that, from about the 16th century the terms “Bohemian Crystal” and “Bohemian Glass” were used by various Bohemian based glass manufacturers as these terms signified the quality of their goods, and distinguished their products from glass made in other parts of the world.
In this respect, BCP admitted that prior to about 1975 each of the Bohemia marks was not to any extent inherently adapted to distinguish the designated goods of BCP from the goods of other persons. However, it asserted that because of the extent to which BCP had used the Bohemia marks at the relevant dates they did distinguish the goods as being those of BCP.
In seeking to establish that the marks were invalid, Host argued that the word “Bohemia” was more likely to be interpreted as being indicative of the geographical origins of a product, rather than glassware emanating from a specific company.
Justice Burley agreed, and found that the word “BOHEMIA” when used in relation to the relevant goods at the relevant dates would have ordinarily signified to traders (and also to many consumers) a region from where glassware was manufactured. The same conclusion was reached in respect of the “BOHEMIA CRYSTAL” mark.
The Bohemia marks were found to be geographically descriptive and therefore not inherently adapted to distinguish the goods of BCP from the goods of other traders.
The Bohemia marks did not in fact distinguish
Even though the marks were not inherently adapted to distinguish, the Court considered if the Bohemia marks did in fact distinguish the goods and this required an analysis of the extent to which BCP had actually used the Bohemia marks.
The evidence filed by BCP included historical financial statements, images of the packaging used on BCP products, advertising and promotional materials, images of physical and online BCP stores, commercial showrooms, trade fairs, sponsorships and other business materials.
In analysing the evidence, Justice Burley identified a number of deficiencies.
A key issue for BCP was that the mark it had most frequently used prior to the relevant dates was one composite mark referred to as the 701 mark:
BCP argued that the words “Bohemia” and “Bohemia Crystal” should be regarded as having separate trade mark signification beyond the combination in which they appear in the 701 mark. His Honour rejected this argument and found that it was the combination of elements within the 701 mark that was distinctive.
His Honour considered that the trade mark should be viewed as a whole and not dissected into parts. This was because the entirety of the mark created a complicated image which, taken collectively, represented a badge of origin for BCP.
As a result, Justice Burley did not consider that the use by BCP of the composite marks containing the words “Bohemia” or “Bohemia Crystal” were a means of demonstrating factual distinctiveness of the Bohemia marks.
Consequently, his Honour found that the registrations for the Bohemia marks should be cancelled because at the relevant date the marks were not sufficiently distinctive to qualify for registration.
If the trade marks had been valid, were they infringed?
Although the Bohemia marks were found to be invalid, Justice Burley went on to consider whether the conduct of Host would have been infringing if the Bohemia marks were in fact valid.
The impugned use by Host included use of the marks Banquet by Bohemia and Crystal by Bohemia in advertising catalogues and on stickers featured on products from the relevant Banquet range. The focus of the Court’s assessment was on the inclusion of the preposition “by”.
Justice Burley found that a typical consumer would understand the reference to “by Bohemia” to mean that there is an entity called “Bohemia” that is somehow responsible, as a source of origin, for the products.
As a result, the most likely view that a consumer would take of those words is that the range of glasses, perhaps called “Banquet” was produced by an entity known by the name “Bohemia”. That is, despite the fact that a geographical meaning would ordinarily be attributed to the word “Bohemia”, the use of that word in the context of the “Banquet by Bohemia” mark did not in fact direct the reader to a geographical meaning.
Therefore, despite the word “Bohemia” not being inherently adapted to distinguish, the addition of the word “by” rendered the term as being no longer geographically descriptive, and instead indicated the origin of the goods as being from an entity known as “Bohemia”.
- This case serves as a useful reminder of the difficulties associated with choosing a trade mark that includes the geographical origin of the goods you sell, or is otherwise descriptive of the goods and services you offer or sell.
- This decision highlights the challenges that can be experienced in demonstrating factual distinctiveness through use – the evidence of any sales, including the volume of sales, must be directly relatable to the mark in question, and it is critical that the date of any materials relied on is as specific as possible, and can be verified.
- This case demonstrates the importance of filing evidence of use of the relevant trade mark as it was actually applied for, as use of the mark in conjunction with another trade mark, or within a composite mark, is unlikely to be considered relevant.