In Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235, Host Corp successfully revoked BCP’s trade mark registrations for BOHEMIA and BOHEMIA CRYSTAL on the basis that neither mark was to any extent adapted to distinguish goods including glassware, nor had they become factually distinctive by reason of their use.
On the question of whether the marks were inherently adapted to distinguish the relevant goods, the Court considered that the word “Bohemia” when used in relation to those goods would ordinarily signify to traders, and also to many consumers, a region from where glassware is manufactured. The same conclusion was reached in relation to the words “Bohemia Crystal”, which were said to be likely to denote a particular style of glassware that originates from Bohemia.
BCP submitted that even if the ordinary signification of the words was directly descriptive, an inquiry should be made into whether traders might legitimately need to use the words in respect of their goods, arguing that the availability of words such as “Czech Crystal” to describe the origin of their goods negated such a need. The Court rejected this submission noting that “the question is not one of “need” but whether traders are likely, with no improper motive, to desire to use words for the ordinary signification which they possess”.
BCP’s claim that the marks had become factually distinctive by reason of their use was supported by a significant body of evidence showing packing and other marketing and promotional material which included the words BOHEMIA and BOHEMIA CRYSTAL. However much of this evidence of use was given little weight because it was not clearly shown to have occurred before the relevant date. The Court also held that the majority of the use was as part of composite mark including other distinctive features. The Judge noted that:
I have some difficulty with the proposition that the words “Bohemia” or “Bohemia Crystal” should in this context be regarded as having separate trade mark signification beyond the combination in which they appear in the composite marks.
The decision highlights how challenging it can be to produce evidence of how a trade mark was used many years in the past and the importance of maintaining historical records of such use.
