Bavaria, beer, and bad grammar: how to avoid s 61 of the Trade Marks Act

In a recent Federal Court case, the Brewery Association of Bavaria (BBA) claimed that the German state of Bavaria was so synonymous with beer that the word “BAVARIA” on a beer label would amount to a geographical indicator (GI), contrary to s 61 of the Trade Marks Act (the Act).  Section 61 prevents the registration of a mark which contains an indicator that the product came from a particular region and has a quality or reputation attributable to that region.

The mark opposed by BBA was a beer label containing the words:

BAVARIA
HOLLAND
BEER

Each word was positioned directly below, and written in smaller letters than, the previous word.

Before considering the mark in question, the court accepted that the words “BAYERICHES BIER” (which translates as “BAVARIAN BEER”) amounted to a GI.  From here it seemed only a small step to conclude that the mark in question also contained a GI.  However, this was not the case, for the following reasons:

1. it was not enough that the mark contained words that were deceptively similar to “BAVARIAN BEER” – the mark itself must contain a GI;
2. neither the word “BAVARIA” nor the words “BAVARIA HOLLAND BEER”, on a beer bottle, constitute a GI;
3. one could not simply ignore the interspersed word “HOLLAND” and argue that the mark contained the words “BAVARIA BEER”; and
4. even if one could ignore the word “HOLLAND”, one could not ignore the difference between “BAVARIA”, the name of a state, and “BAVARIAN BEER”, which describes the kind of beer that comes from Bavaria.

The comments in (4) raise an interesting question – would it be possible to avoid s 61 merely by substituting an adjective (“BAVARIAN”) with a noun (“BAVARIA”), even if this involves the use of poor grammar?  Following this case, the argument can at least be made, even though such a result might seem counter-intuitive and contrary to the purposes of the Act.  However, we note that her Honour’s comments on this point may not prove binding in future decisions, given the conclusion about the interspersed word “HOLLAND”.

Finally, the decision suggests that even where a region is famous for the production of a particular quality or type of product, a trade mark must generally contain more than simply the name of that region to be rejected on the basis of s 61 of the Act.