Chapter 7


IP Report 2018

Trade mark location names

What's in a name

Geographical location names in trade marks (or product or business names) are used to signal to consumers the character associated with the origin of the product or business the trade mark represents.1 By invoking a location, which has various desirable characteristics associated with it, businesses can gain competitive advantage and become more profitable through premium pricing of their products.

Research into the geography–IP interface is contingent on the availability of reliable data linking the two. Such research can inform policy issues related to, for example, geographical indications (GIs)2 and certification trade marks3. In this vein, the OCE, in collaboration with The University of Melbourne and Swinburne University of Technology, produced a database that provides comprehensive information on location names in Australian trade marks. Names from the GeoNames4 database were compared with words used in trade marks registered in Australia between 1990–2013. This exercise resulted in more than 4 million potential location name–trade mark pairs, spread across 238 000 geographical locations around the world.

Rigorous checking of these initial pairs ultimately led to around 2500 confirmed matches where location names were correctly identified in trade marks. These encompassed 80 Australian and 17 overseas locations, where at least 10 trade marks included a particular location.5 Our exploratory analysis of this unique database has revealed interesting facts about the patterns and trends of location name use in Australian trade marks.

Food and beverage products — predominant users of location names in Australian trade marks

Barossa Valley6 — a renowned wine-producing region in South Australia — is the most frequently used location name in Australian-origin trade marks, while Champagne7 (France) is the leading overseas location name used in trade marks registered in Australia (Table 2). Other well-known overseas locations such as Marlborough (New Zealand) and California (USA) were also prominent in the database. Margaret River (Western Australia) and Sydney (New South Wales) are among other well-known domestic locations in Australian trade marks. Figure 17 shows these top domestic locations in Australian trade marks.

Table 2: Top ten location names in Australian trade mark applications, 1990–2013

Rank

Australian location name

No. of applications

Foreign location name

No. of applications

1

Barossa SA)

147

Champagne (France)

47

2

Margaret River (WA)

130

Marlborough (New Zealand)

33

3

Sydney (NSW)

127

California (USA)

23

4

Hunter Valley (NSW)

108

Bourbon (USA)

22

5

Yarra (VIC)

86

London (UK)

22

6

Bundaberg (QLD)

79

Tequila (Mexico)

18

7

Swan (WA)

66

Hershey (USA)

17

8

Carlton (VIC)

62

Milano (Italy)

17

9

Byron Bay (NSW)

60

Chandon (France)

16

10

Coonawarra (SA)

56

Rosemount (Scotland)

15

Source: IP Australia (2017), custom database of Australian trade marks with location names. The data is available at https://data.gov.au/dataset/oce-research-and-publication-data.

Location name use in Australian trade marks is more common within city locations; examples include ‘Sydney Fish Market’ and ‘Sydney Morning Herald’. Registered GIs, on the other hand, are often associated with relatively smaller geographical areas or non-urban regions famous for particular products. Although most location names found in Australian trade marks are not registered GIs, the analysis reveals that trade marks from the Nice classes of (i) 29, 30 and 31 (collectively referred to here as Food) and (ii) 33 (referred to here as Wine, Spirits and Liqueurs) are the predominant users of location names, much like registered GIs. 8

Figure 17: Top domestic locations used in Australian trade marks

Top domestic locations used in Australian trade marks, a link to the data follows.

Source: IP Australia (2017), custom database of Australian trade marks with location names. The data is available at https://data.gov.au/dataset/oce-research-and-publication-data.

Note: Each circle represents a location. The size of a circle is proportional to the number of trade marks using the location name in question.

The City category refers to trade marks with Australian capital city names. This category encompasses a broad spectrum of Nice classes. This suggests that the reputation of the city itself may not necessarily be used to indicate superior quality of any given product, rather the name can be used simply to indicate its geographical origin.

Trade marks from the Food and Wines, Spirits and Liqueurs categories of goods encompass 49 Australian and 17 overseas location names on the Australian trade mark register (Figure 18). Eleven out of 17 foreign location names in Australian trade marks are from the Wine, Spirits and Liqueurs class, with another five from Food classes, and one in class 32 for Heineken beer which refers to Amsterdam in several trade marks.

Figure 18: Number of locations in various Nice classes of trade mark

  • Purple square Wine, Spirits & Liqueurs
  • Yellow bar Food
  • Almond bar Other
  • Brown bar Beer & soft drinks

Source: IP Australia (2017), custom database of Australian trade marks with location names. The data is available at https://data.gov.au/dataset/oce-research-and-publication-data.

Note: Location names are used across a range of Nice classes of trade marks. For the purpose of this analysis, locations are assigned to the class in which they are most prevalent. Thus Barossa, for example, is assigned to the Wine, Spirits and Liqueurs class even though this geographical name may appear in applications for other classes.

France has filed the largest number of Wine, Spirits and Liqueurs trade marks with location names, followed by the United States (US) and the United Kingdom (UK) (Figure 19). Examples of trade marks registered from these countries include Moët & Chandon Ice Imperial from France, Jim Beam from the US and Rosemount Estate Diamond Label from the UK.

Figure 19: Number of non-resident filings (by country) with location names, Wine, Spirits and Liqueurs class, selected countries, 1990-2013

  • Orange bar Non-resident filings

Source: IP Australia (2017), custom database of Australian trade marks with location names. The data is available at https://data.gov.au/dataset/oce-research-and-publication-data.

Domestic filings of Wine, Spirits and Liqueurs trade marks have been volatile

Resident filings of Wine, Spirits and Liqueurs trade marks with location names increased dramatically from 1995 and peaked in 2000 (Figure 20). This coincided with a surge in Australian wine production and exports. Australian-origin trade mark applications from this Nice class fell sharply after 2000, to increase strongly during 2003–05; since then, it has trended downward but with continuing large oscillations in filings. In contrast, non-resident filing activity has steadily increased, albeit from a low base, to match domestic filings in 2011, before subsiding in subsequent years. This suggests a growing penetration of the Australian wine market by foreign products.

Figure 20: Number of resident and non-resident filings with location names, Wine, Spirits and Liqueurs class, 1990-2013

  • Purple square Australian
  • Yellow triangle Non-resident

Source: IP Australia (2017), custom database of Australian trade marks with location names. The data is available at https://data.gov.au/dataset/oce-research-and-publication-data.

While GIs are an increasingly relevant but contentious issue in international trade negotiations, empirical evidence on their economic impact is sporadic at best. A lack of reliable data is the main reason behind this paucity of evidence. The simple analytics presented in this chapter show the potential of this new database of Australian trade marks with geographical location names to further research in this field.

End notes

  1. These are not necessarily restricted to goods. For example, if you see the words ‘Canberra Plumbing’ in a trade mark then you may think that it is a local and possibly a small business. If you want to support a local business, then the word ‘Canberra’ in the trade mark may appeal to you. And if this happens, then ‘Canberra Plumbing’ succeeds in attracting a customer simply by leveraging a location name.
  2. A geographical indication (GI) identifies a good as originating in a specific territory, region or locality where a particular quality, reputation or other characteristic of the good is essentially attributable to its geographical origin. See https://www.ipaustralia.gov.au/trade-marks/understanding-trade-marks/types-trade-marks/certification-trade-mark/geographical, accessed 22 February 2018.
  3. A certification trade mark shows that a trader’s goods and services meet an official set of standards. Standards commonly certified include quality, content, manufacturing method and geographical origin. See https://www.ipaustralia.gov.au/trade-marks/understanding-trade-marks/types-of-trade-marks/certification-trade-mark, accessed 22 February 2018.
  4. http://www.geonames.org/
  5. Silly Willy’s (an Australian trade mark) being matched to Silly (a municipality in Belgium) is an example of an obviously false match.
  6. Barossa Valley is also a registered GI. Therefore, some, but not all, location names identified in the database are also registered GIs.
  7. Champagne is a registered GI too.
  8. The Nice classes highlighted in the analysis of this chapter are: Classes 29, 30 and 31; Class 32; and Class 33. For details, see: http://www.wipo.int/classifications/nice/en/.

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