Golf business loses trade mark appeal over St Andrews name

St Andrews Links Ltd – which runs seven famous courses (including The Old Course) and is one of the town’s biggest employers – had first hoped to secure the rights with an application to the European Union Intellectual Property Office (EUIPO) back in 2012, but this was turned down in 2016.

Last year, the company appealed the decision, but in a ruling delivered by the EU General Court in Luxembourg this month the action was dismissed.

Official documents outlining the judgement of the court show the Board of Appeal argued that “the expression ‘St Andrews’ referred above all to a town known for its golf courses though not particularly for the manufacturing or marketing of clothing, footwear, headgear, games and playthings.

“The relevant consumer will not establish a link between those goods and services and that expression.”

The EUIPO contended that the EU General Court should both dismiss the action and order St Andrews Links Ltd to pay the appeal costs.

While St Andrews Links Ltd has previously secured registrations around the St Andrews name for a range of products, it provided insufficient evidence to prove acquired distinctiveness for services relating to golf.

The court said that EU and UK law generally excludes the registration of geographical names as trade marks “where they designate specified geographical locations which are already famous, or are known for the category of goods or services concerned.”

Furthermore, it was stated that the appeal board was entitled to find that there were, in addition to St Andrews Links’ golf courses, “several other major golf courses which lay claim to part of the heritage of St Andrews”, that the mark applied for could not be registered as an EU trade mark, and “none of the arguments put forward by the applicant is such as to call in question that conclusion.”

The court concluded that “the applicant’s single plea in law must be rejected as unfounded and the action thereby dismissed in its entirety.”

Campbell Newell, a partner in Marks & Clerk’s Edinburgh office, said: “Generally, geographical place names should remain free for bona fide usage because positive association between a place name and a mark may potentially influence a consumer.

“There are many Scottish whisky brands named after places, and there isn’t a blanket ban on registering place names, but it is necessary to establish an element of distinctiveness in the way the name is understood by the relevant public, as denoting a brand and not merely a location.”

Marks & Clerk recently found that UK trade mark applications originating from Scotland had risen by a quarter in the past year despite Brexit fears.

Recent data from the Intellectual Property Office[ii] shows that trade mark applications from north of the border rose from 2,736 in 2016 to 3,417 in 2017 (24.8 per cent), while registrations increased from 2,288 to 2,883 (26 per cent) in the same period.

This represents a significant increase on last year’s figures which saw applications rise from 2,448 in 2015 to 2,736 in 2016 (11.7 per cent), with registrations increasing from 2,013 to 2,288 (13.6 per cent) in the same period.