He’s not just about golf and he’s not just the patron saint of Scotland. St Andrew is also the patron saint of Greece, Russia, Italy’s Amalfi and Barbados. And if that wasn’t enough, he’s the patron saint of singers, spinsters, maidens, fishmongers, fishermen, women wanting to be mothers, gout and sore throats too!
Nevertheless, St Andrews Links Ltd (a company that runs a number of gold courses and one of the town’s biggest employers) sought to secure exclusive rights to use the name ‘St Andrews’ in relation to golf services.
The company made a trade mark application to the European Union Intellectual Property Office (EUIPO) in 2012 but this has been finally refused by the EU courts.
The company had previously obtained exclusive trade mark rights to use the name ‘St Andrews’ in relation to a range of other products, but the EU General Court has ruled that the company provided insufficient evidence to show acquired distinctiveness for golf services.
The court also said that EU and UK law generally do not allow geographical names to be registered as trade marks particularly where they designate specified geographical locations which are already famous or where they are already well-known for the category of goods or services in question.
Trade marks must designate trade origin. The principal function of a trade mark is the ‘origin function’ which means that the mark must be sufficiently distinctive to enable consumers to identify the origin of the goods/services sold under the mark. ‘St Andrew’s’ is already well-known for golf and as such consumers would not be able to use the mark to distinguish between the golf products/services of one company and those of another.
Place names must (generally) remain free to use. Generally speaking, businesses must be free to use the geographical place names that tell consumers about the products/services they sell. To grant one company a monopoly right to use a place name, would be to deprive all competitors in the same area of the ability to describe where their products/services come from. It would also deprive them of goodwill and commercial advantage that sometimes accompanies a particular place name.
Seek advice early! The St Andrew’s trade mark saga highlights the importance of seeking advice on the registrability of your trade mark as early as possible, and in particular the importance of assessing things like distinctiveness, descriptiveness and competitors who may have prior goodwill or prior blocking marks, before trade mark applications are filed.
Briffa advises on all aspects of trade mark law and practice and offers free consultations to all new clients. If you would like to have a call or a meeting at our offices in the Business Design Centre in London, please call 020 7288 6003 or email email@example.com.