Country Names and Trade Marks

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Is it possible to register a country name as a trade mark? For example, would you be able to register a country name  like JAMAICA as a trade mark?

Does it make any difference which goods or services you provide? What if you wanted to register JAMAICA for jerk chicken spicy sauce or rum beverages?

These are questions that can come up if you choose a country name as your trade mark.

Law
The trade mark Act at Section 3(1) (c) prohibits the registration of marks designating geographical origin.

A country name would, on first view, appear to be prohibited from registration.

Displacement
However, where the geographical significance of the country name can be displaced then a trade mark may be registered.

This might happen through either extensive use of the mark or by conceptual disassociation.

Regarding extensive use, customers using the ICELAND store do not think that the goods come from Iceland as a country, therefore, the geographical origin of the name ICELAND in this case is displaced.

Regarding disassociation, where there is no possibility of the place name indicating geographical origin, such as NORTH POLE for bananas, the geographical significance is displaced.

Practice
It is notable that JAMAICA is already on the Madrid Protocol register in class 3 and 42  and on the EU register in class 3.

These were for soap and other beauty products and are owned by Procter & Gamble.

A JAMAICA registration was refused a Madrid application in 2006. This was for alcoholic drinks and fruit juices.

These examples show a potential trend whereby the Registry has to take a view as to whether the goods and services indicate geographical origin for a specific country name.

In other words, examiners use their discretion to decide which products are famously associated with a country name.

In the first example, the examiner decided the country Jamaica is not well known for its cosmetics therefore the geographical significance of the name may be displaced. Essentially, the general public will not think that the cosmetics come from Jamaica.

However, Jamaica is famous for its rum, so it is possible that the refusal of JAMAICA for alcoholic drinks was linked to the public thinking that the trade mark JAMAICA for alcohol would communicate that the products come from the country itself.

Following this line of reasoning it would be hard to see a trade mark application for GERMANY for sausages or FRANCE for wine or UNITED STATES for burgers succeeding.

It may also be the case that the reason JAMAICA succeeded for Procter & Gamble was through showing extensive use in the same way that ICELAND (the supermarket) did.

Upshot
So if you are thinking about registering a country name as a trade mark consider whether you have  extensive use of the trade mark and whether, in the eyes of the public, your goods and services could be disassociated with the country name.  Also bear in mind that if you need wider international registrations, approaches may vary amongst registry offices and according to national laws.  This could therefore add to the costs of registration.