A recent story out of Ireland highlights the importance of understanding territorial trademark protection requirements when registering trademarks—both at home and abroad.
Techdirt and The Spirits Business recently reported about Leo Mansfield, an entrepreneur from Northwestern Ireland who opened a retail outlet in Clifden, Ireland in 2009 called Conn O’Mara, a play on the name of the geographical region where the store is located (CONNEMARA). Since opening his store, Mansfield has decided to produce and sell beer under the store’s name, and filed a trademark application for CONN O’MARA at the Irish Patent Office for beer and alcohol beverages including whisky in Class 32 and 33 (Trademark No. 253618).
U.S.-based Beam Suntory, a subsidiary of Japan beverage behemoth Suntory, filed a notice of opposition at the Irish Patent Office against Mansfield’s CONN O’MARA trademark application citing his trademark’s likelihood of confusion with its CONNEMARA trademark for whisky owned by its locally-owned distillery, Cooley Distillery. Mr. Mansfield has since begun a public relations and petition campaign to contest Beam Suntory’s trademark opposition. Specifically, Mansfield has made statements that CONNEMARA is the name of the geographical region in which his store and the Cooley Distillery are located, and as such, Beam Suntory cannot monopolize use of a geographical region name as a trademark. He has even gone so far as starting a public petition against Bean Suntory’s opposition proceeding.
Mr. Mansfield defense of his store is admirable. However, his story drives home the importance of brand owners understanding differences between trademark protection requirements from country-to-country.
If Mr. Mansfield case had occurred in the U.S., he may have been able to defend against Beam Suntory’s opposition and obtain registration for his trademark. With limited exceptions, the U.S.’ federal trademark act (Lanham Act; 15 U.S.C. § 1052(e)(2)) prohibits registration of a trademark that is “primarily geographically descriptive” of the goods of its owner. As such, Beam Suntory’s CONNEMARA trademark, as used by Cooley Distillery, would not be entitled to protection in the U.S., meaning Beam Suntory likely could not have brought forth an opposition.
Unfortunately, Ireland provides no similar registration restrictions on geographically descriptive trademarks. Ireland’s trademark legislation, the 1996 Trade Marks Act, does not bar registration of a trademark for being primarily geographically descriptive. As such, Bean Suntory’s trademark rights to CONNEMARA in Ireland are not only valid, but will likely prevent Mr. Mansfield from successfully defending against Bean Suntory’s opposition.
What’s The Takeaway? Brand owners wishing to seek trademark protection for their brands in multiple countries need to consider whether their brand names and logos would be entitled to trademark protection not only in their own country, but also in their expected foreign markets of expansion. Working with a qualified trademark attorney with multi-jurisdictional strategizing experience can help to ensure differences in trademark protection across jurisdictions are taken into consideration.