United States retailers, who are not in Australia, are the registered owners of the ‘Bondi Beach’ trademark in the US for many products, including cosmetics, body spray and aroma. When Sydney’s company Bondi Wash gave the trademark its name in the US, it was prevented from doing so due to the similarity of current rights of Abercrombie and Fitch.
This case has raised concerns about foreign companies, who are acquiring exclusive ownership of high profile Australian location in their branding. Everyone uses the name Bondi Beach, and for this can be banned by an organization throughout the US, it seems wrong. This is completely wrong.
Other reputed place names which are trademark in U.S.
• Uluru, which is registered to a carpet company.
• Kakadu, which is registered to a cosmetics company that uses Australian native Kakadu plums in its products.
However, Once upon a time the trademark had more local identity, but now you can do global branding, and often it raises a difficult question, “Matthew Rimmer, a professor in intellectual property professors and innovation law in the QUT.”
Bondi Wash, Already trademarked in Australia
Bondi Wash has successfully trademarked his name in Australia, such as Bondi Icebergs and Bondi Surf Club Australia, along with other Bondi based organizations. Companies have also trademarked Bondi related products in Australia, in which Bondi burgers are included by Bondi Vet and Fast Food Franchise Oportos by an entertainment company. In an effort to get its trademark approved in the US, Bondi Wash last year challenged Abercrombie’s claim over the Bondi Beach trademark and two other similar marks, on the grounds it believed Abercrombie was no longer using the trademark.
Battle for small Aussie Businesses
Last month, Bondi Wash withdrew its petition in the US. The company is pursuing an alternative classification for its trademark, such as “preparing for domestic cleaning”, “scented articles” and “all-purpose disinfectors for home use”. Jennifer McEwan, convenor of the trademark committee for Australia’s patent and trademark attorney, said that there are different meanings for the establishment of a prestigious icon in different countries.
An icon can be distinguished in Australia or other countries but may not be United States!
Under USA law, geographical names can be refused registration if its geographic location is of primary significance to the relevant consumers in the USA. Therefore, it seems the USPTO examiner took the view that Bondi Beach and Bondi Beach Club marks were not primarily of geographic significance to the relevant consumers in the USA.
Different low in Australia
Bondi beaches are not registered for fruit or wine, or even the Bondi beach for clothing, unless evidence of extensive pre-usage of trademarks is provided during the examination process, or if other specific elements are added to the name; for example, a logo, The trademarking of iconic Australian locations by foreign companies can often lead to protracted and expensive legal challenges for small Australian companies looking to expand overseas.
For big companies, they will have trademark attorneys who will do the survey of registers and will see anything that could possibly be a confrontation or collision on existing trademarks of some of their existing classes. There are important issues regarding the reach of justice in relation to certain trademark battles; sometimes you have these disparities in relation to the power of legal expertise and bargaining.
“Sometimes it’s hard for small businesses in Australia to take on much bigger entities.”