Skip to content

  • Home
  • Client results
  • Expertise
  • News & Insights
  • Events
  • People
  • Our DNA
  • Join us
  • Contact Us
  • Client Login
Home / NEWS & INSIGHTS / Blog / The Handshake / Life’s not a beach in Bondi Beach trade mark dispute
The Handshake 17 August 2017

Life’s not a beach in Bondi Beach trade mark dispute

The news broke this month that multinational retail giant Abercrombie and Fitch has trade marked the name ‘Bondi Beach’ in the US. It was discovered by the Sydney-based toiletries company Bondi Wash who filed a trade mark to protect its name in the US, but was initially blocked because it was too similar to Abercrombie and Fitch’s trade mark. The US retailer has no presence in, or connection with, the iconic beach or Australia generally, but allegedly had a beauty range which it named “Bondi Beach”.

Bondi Wash challenged the trade mark on the basis that it was no longer in-use, but the cancellation action has since been withdrawn after Abercrombie and Fitch refused to back down.

Why is this an issue?

This has sparked concern in Australia, as many people were previously unaware that foreign companies could obtain exclusive rights to use Australian words and the names of iconic Australian places in overseas jurisdictions. This is not the only iconic Australian place name that has been trade marked by foreign companies in the US. Uluru is registered to a carpet company and Kakadu is registered to a cosmetics company.

In Australia common place names, such as iconic beaches or cities, will be rejected as trade marks because they should be available for all traders to use to describe their goods and services. Companies may however, in some circumstances, successfully register trade marks including common place names if the names are combined with something more distinctive such as another word or a logo, or the trade marks have been extensively used. As a result, there are a broad range of Australian companies that incorporate ‘Bondi’ into their brand names and trade marks.

While under US law geographical names can be refused registration if the location is known and understood by the relevant segment of US consumers, the United States Patent and Trademark Office examiner presumably took the view that ‘Bondi Beach’ was not of sufficient significance to US consumers, or that the mark had acquired a secondary meaning. Australian businesses such as Bondi Wash or Bondi Sands may therefore find difficultly operating under their brand names without infringement claims, and incur significant legal costs when they look to expand overseas.

Waverly Mayer Sally Betts has said that “it’s an Australian beach so I don’t believe anyone in another country should be able to trade mark it.” The Waverly Council has since brought this to the attention of the Federal Trade Minister’s office, and while they have no legal standing, a letter is reportedly being drafted to Abercrombie and Fitch asking them to voluntarily relinquish its trade mark on Bondi Beach. At this stage however, their only chance is to appeal to the retailer’s good will.

This publication covers legal and technical issues in a general way. It is not designed to express opinions on specific cases. It is intended for information purposes only and should not be regarded as legal advice. Further advice should be obtained before taking action on any issue dealt with in this publication.

About the authors

  • Belinda Breakspear

    Partner

In other news

Introducing the New York Convention for International Settlement Agreements

Insight

Introducing the New York Convention for International Settlement Agreements

15 February 2019 Insight

Proposed repeal of IP exemption has companies racing to review contracts

Insight

Proposed repeal of IP exemption has companies racing to review contracts

12 February 2019 Insight

Indemnity Clauses – Be Careful What You Wish For

Insight

Indemnity Clauses – Be Careful What You Wish For

7 February 2019 Insight

Crown land policies in New South Wales

Insight

Crown land policies in New South Wales

5 February 2019 Insight

VIEW ALL NEWS & INSIGHTS

BRISBANE

Level 11 , Central Plaza Two
66 Eagle Street
Brisbane QLD 4000
GPO Box 1855, Brisbane QLD 4001

Tel +61 7 3233 8888
Fax +61 7 3229 9949

 

GET IN TOUCH

Contact form

sydney

Level 32, MLC Centre
19 Martin Place
Sydney NSW 2000
GPO Box 462, Sydney NSW 2001

Tel +61 2 8241 5600
Fax +61 2 8241 5699

 

GET IN TOUCH

Contact form



melbourne

Level 27, 101 Collins Street
Melbourne VIC 3000
GPO Box 2924
Melbourne VIC 3001

Tel +61 3 9067 3100
Fax +61 3 9067 3199

 

GET IN TOUCH

Contact form



follow us

CLIENT LOGIN

newcastle

Level 2, 16 Telford Street
Newcastle NSW 2300
PO Box 394
Newcastle NSW 2300

Tel +61 2 4914 6900
Fax +61 2 4914 6999

 

GET IN TOUCH

Contact form



canberra

Level 9, 2 Phillip Law Street
Canberra ACT 2601

Tel +61 2 6243 3699
Fax +61 2 8241 5699

 

GET IN TOUCH

Contact form



© 2017 McCullough Robertson.Site mapDisclaimerPrivacy Policy

X