The EU’s General Court recently found that the trade mark ‘NIAGARA’ was descriptive for bottled water and similar goods. It held that the public were likely to perceive ‘niagara’ as indicating the origin of the applicant’s goods (i.e. Niagara Falls) and – as such – the word must be kept free in order to allow others to use ‘Niagara’ to designate the origin of their bottled water. Therefore, the application to register ‘NIAGARA’ in the EU was refused.

Strangely, however, the UK intellectual property office did allow an application for the same mark (for the same goods) in the UK as did the Chinese and US trade mark offices. On the other hand, it appears that the Japanese trade mark office has also refused the application there.

All of this just goes to show the importance of considering – before making an investment in your chosen brand – whether you can protect it both in your home territory and in the desired countries overseas.

If you are developing a brand which you intend to use around the world and are not sure if it may be considered descriptive or are concerned that there may be other issues with it, contact one of Briffa’s experts on INFO or 0207 288 6003 for a free consultation.