Bondi Wash brand at sea with international trade mark dispute

Rita Khodeir, Adnan Meher

A recent development, involving the iconic Bondi Beach, has reinforced the importance of protecting your trade mark globally if your business is looking to expand into global markets.  

In this situation, US retailer Abercrombie & Fitch is the registered owner of the ‘Bondi Beach’ trade mark within the United States (US). The US retailer has no presence in Australia however, prevented Sydney company, Bondi Wash, from registering the trade mark because of the similarity to the US retailer’s existing rights. 

Bondi Wash challenged the Abercrombie & Fitch on the basis that the US retailer was no longer using it. Abercombie & Fitch defended this petition and Bondi Wash has since withdrawn its petition as it appears the parties resolved the matter amicably. Bondi Wash has now sought to register the trademark under a different classification such as “household cleaning preparations” and “scented articles.” 

This case demonstrates the importance of obtaining international trade mark protection of not only iconic Australian brands but any Australian brand. An Australian trade mark registration doesn’t protect the mark internationally and generally would not stop the registration of your mark in another country by a third party. If you’re hoping to expand your business into global markets at some stage you should consider obtaining trade mark protection in these global markets. It’s important to obtain legal advice on international trade mark protection at an early stage. Proper planning and early protection will:

  1. Hopefully prevent a third party with no association or connection with your brand from obtaining exclusive rights to your brand overseas to take advantage of the reputation and goodwill existing in your brand;   
  2. Avoid a lengthy and costly legal battle with a third party who may have acquired  exclusive rights to your brand; and, 
  3. Avoid unnecessary costs which you would incur if a re-brand is necessary or if an application is unsuccessful and needs to be re-lodged. 

This case is also reinforces that each country has its own trade mark laws and the interpretation and application of those laws may result in different registration outcomes for the same brand in different countries. Registration in one country doesn’t necessarily guarantee registration in another country. Abercrombie & Fitch was able to register the trade mark “Bondi Beach” in the US because the United States Patent and Trademark Office formed the view that the term ‘Bondi Beach’ wasn’t of primary geographic significance to relevant consumers in the United States, allowing the US company to obtain exclusive rights to the iconic Australian name. However, if Abercombie & Fitch sought to register the same mark in Australia, they may struggle to overcome the examination process given the geographical significance of the name to Australian consumers.    

If you would like to seek some legal advice regarding this issue and protecting your brand globally, get in contact with our Intellectual Property team who can assist with this issue:

Rita Khodeir, Senior Associate
Phone: +61 2 9895 9250
Email: rkhodeir@colemangreig.com.au

Adnan Meher, Lawyer
Phone: + 61 2 9895 9287
Email: ameher@colemangreig.com.au

 

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