Intellectual Property Law Update - Name of one of Burkina Faso’s 45 provinces rejected under s 41 TMA because it is a geographic location

Intellectual Property
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Mantra IP Pty Ltd [2017] ATMO 10 (7 February 2017)

Registration sought for the mark BALÉ in respect of various services in classes 39 and 43 relating to holiday reservations, travel and accommodation services.

Opposed pursuant to s 41 TMA on the grounds that the mark is a geographic indicator.

Bale is the name of geographic locations in Croatia and Ethiopia.   Balé is the name of one of the 45 provinces of Burkina Faso which, according to the hearing officer (who appears to have relied on his own Wikipedia searches) is “known for its Deux Balé Forest which is populated by savannah elephant herds“.

Here are some Deux Balé Forest elephants:



The Applicant submitted that “the Registrar can reasonably infer, by virtue of the relative obscurity of this province to an Australian audience, that the number of travellers who would be interested in a holiday would be an extraordinarily small subset of the relevant consumer base.”

It continued “that the number of Australians visiting Balé, Burkina Faso, and therefore the number of consumers who would understand the ordinary signification of the mark to mean ‘Balé, Burkina Faso’, would be very low. The Applicant, a large and sophisticated hotel operator, was not aware of the place until the Hearing Officer brought it to our attention. We were not aware either, and neither was the original examiner. It is submitted it is not a well-known destination for Australians.”

While acknowledging that the applicant’s submissions “have their appeal“, the HO was unpersuaded.  He accepted “that it would be absurd for every geographical location to be held to lack inherent adaptation to distinguish tourism services is persuasive” and that “at this time, Balé is seemingly unknown as a destination for tourists.”

But concluded:

“However, to paraphrase the words of Kitto J from Clark Equipment … if it is reasonable to suppose that tourism services may be provided in connection with Balé in the future, the Trade Mark cannot be considered to distinguish the Amended Services from the services of other traders. I am satisfied that such an assumption is reasonable, and on that basis the Trade Mark is not to any extent adapted to distinguish the Amended Services and, therefore, a ground for rejecting the application exists under s 41.”

The basis for this conclusion seems to be the HO’s reasoning that:

“Africa is a well-known destination for wildlife tourism. Of especial interest to some tourists are ‘the Big Five’ which is a set of five different African animals, one of which is elephants. It is reasonable to suppose that, if it is not already, in the future Balé may well become a recognised destination for those people hoping to catch a glimpse of the elephants that live there. Should this occur, the ordinary signification of Balé, to persons wishing to travel to Africa to see elephants, is that Balé is a geographical location where elephants can be seen.”

The Applicant’s contentions that the mark had acquired distinctiveness were also unsuccessful.

The application was rejected.

Benjamin Gardiner Headshot

Ben Gardiner KC practises primarily in intellectual property litigation

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