from the fore! dept
For those of us who have fallen in love with the world’s most personally infuriating sport, golf, the name The St. Andrews Links Golf Course is of course quite notable. The famed “Cathedral of Golf” also happens to be located in a town of the same name, St. Andrews in Scotland. St. Andrews is a fairly common term in the naming of locations and famous landmarks. Despite this, The Saint Andrews Links went to the EU’s Intellectual Property Office to request it be granted a trademark for “St. Andrews” in roughly every category, including broadly in apparel and sports goods. When that request was denied in 2016 on grounds that location names have high bars to clear to get trademarks and are therefore relatively rarely granted, St. Andrews Links took its case to Luxembourg on appeal.
There, the EU General Court dismissed the appeal, arguing again that “St. Andrews” is primarily a reference to the town of St. Andrews, not to any provider of the type of goods that St. Andrews Links wanted to hold trademarks for.
But having had its application to the European Union Intellectual Property Office (EUIPO) turned down in 2016, an appeal against the decision has now been dismissed by the EU General Court in Luxembourg. According to official documents, the appeal board argued “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 court said 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.”
In other words, the town itself is also well known and, because the mark applied for consisted of the name of that famous town, St. Andrews Links can’t lock up “St. Andrews” for itself in a bunch of categories not directly related to its business. Readers here will likely be nodding along, understanding that this all makes perfect sense. The reason I’m highlighting all of this is because of how frustratingly rare it is for an intellectual property office and appeals court to get this so, so right. Too often, corporate wishes are simply granted, especially when dealing with an entity like St. Andrews Links, which is itself rather famous and is a point of pride for the region.
It sure would be nice if other IPOs applied the intent of the law this strictly.