Can you Trade Mark a Village? A question of geography

A fascinating case being handled by Silverman Sherliker has the potential to clarify the use of geographical names as trade marks. The case involves a challenge by one of our clients against another business that is attempting to register as a trade mark the name of the village in Scotland in which both businesses are located.

Under Section 3(1) of the Trade Marks Act 1994, “trade marks which consist exclusively of signs or indications which may serve […] to designate the […] geographical origin [...] of goods or services” shall not be registered.

Dennis Lee, intellectual property partner at Silverman Sherliker, who is acting on behalf of the client, said that registration of the village name could mislead the public into thinking that the business represented the village, or that the applicant of the trade mark actually owns the village.

He said the outcome could provide greater clarity over the definition of a geographical name, which he describes as “a loose term” at present.

The complex and long-running case continues to be aggressively defended by both parties and if a settlement is not reached, it will proceed to a formal hearing at the UK Intellectual Property Office.

IP law – the rules that govern brands and names – is of vital importance to all businesses operating in a competitive environment.  The evolving nuances of the law require expert handling.  Please contact Dennis Lee, IP Partner, or any member of Silverman Sherliker’s IP Team, for advice: dktl@silvermansherliker.co.uk.