Giving Unauthorised Traders A Red Card: The Registration And Enforcement Of Geographical Names As Trade Marks

Trade mark registries have traditionally approached the registration of geographical names with caution. This caution stemmed from the concern that the grant of a monopoly over a geographical name may unfairly restrict the ability of other traders in the territory to refer to the geographical name in relation to their goods or services.

Registration

In the United Kingdom - TOTTENHAM

Tottenham is an urban area located in the London Borough of Haringey. This geographical name has been registered as a trade mark in the United Kingdom by Tottenham Hotspur pLC.

In accepting TOTTENHAM for registration, the Trade Marks Officer applied a two part test:

if consumers currently associate the category of goods for which trade mark registration is sought with the place

(and not the party applying to register the name), it will be refused for registration, and

if consumers do not currently associate the place with the goods or services, but it is reasonable to assume that such an association may be made in future, the geographical name will be refused for registration.

So, if the goods or services are exclusively associated with the party applying to register the name as a trade mark, and that name is not regarded (nor likely to become regarded) as an indicator of the place where the goods or services are sold or provided, the name will be registrable as a trade mark.

In deciding that TOTTENHAM was not currently seen, nor likely to be seen in future, as an indicator of geographical origin, but was more likely to be associated with the Tottenham Hotspur Football Club, the Trade Marks Officer found that:

there was no evidence that Tottenham is a large commercial or industrial centre

the larger an area, by population or size, the more likely that its...