The decision of the Federal Court of Australia in Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235 represents a significant moment in Australian trade mark law, particularly concerning the registrability of geographical names. This case, presided over by Justice Burley, involved a multi-layered dispute over the words “BOHEMIA” and “BOHEMIA CRYSTAL” in relation to glassware and crystal products. The litigation encompassed a cross-claim for the revocation of these marks, allegations of trade mark infringement, and claims of misleading or deceptive conduct under the Australian Consumer Law.
Justice Burley ultimately found in favour of the respondents, Host Corporation Pty Ltd and its director Gavan Sullivan, ordering that the trade marks be removed from the Register. The Court held that the marks were not capable of distinguishing the applicant’s goods from those of other traders at the time they were filed. Furthermore, the Court dismissed the claims for trade mark infringement and consumer law violations, providing a detailed analysis of how geographical terms function in the marketplace.
Background of the Dispute
The roots of this conflict stretch back centuries to the region of Bohemia, a part of the modern Czech Republic historically renowned for glass and crystal manufacturing. The applicant, Bohemia Crystal Pty Ltd (BCP), was incorporated in 1975 as a subsidiary of a Czechoslovakian government entity responsible for glass exports. Over decades, BCP established itself in Australia as a “high-end” vendor of fine glassware, often sourcing products from the Czech Republic and using various trade marks, including a well-known composite logo featuring a “W” device.
In the early 2000s, BCP successfully applied for the word marks “BOHEMIA CRYSTAL” and “BOHEMIA”. The dispute arose when Host Corporation, a supplier of catering equipment and glassware to the hospitality industry, began importing and selling a range of products known as “Banquet Crystal by Bohemia”. Host marketed these products primarily to the “HORECA” trade, i.e. hotels, restaurants, and cafes, positioning them as durable, utilitarian items at a lower price point than BCP’s luxury offerings. BCP alleged that Host’s use of the word “Bohemia” on packaging, stickers, and in catalogues infringed its statutory monopoly and misled consumers into believing there was a connection between the two businesses.
The Issues before the court
The Court had several complex legal questions across three main areas:
- Whether the “BOHEMIA” and “BOHEMIA CRYSTAL” marks actually capable of distinguishing BCP’s goods from those of others at the filing dates, or were they merely geographical descriptors that other traders should be free to use?
- Whether Host’s use of phrases like “by Bohemia” constitute “use as a trade mark” under the Trade Marks Act 1995 (Cth)?
- Whether Host’s branding and marketing material make false representations that its products were sponsored by, approved by, or affiliated with BCP?
The validity of Geographical Marks
The most critical aspect of the judgment focused on the cross-claim brought by Host to revoke BCP’s marks. Under Section 41 of the Trade Marks Act (as it stood at the relevant time), a mark must be rejected if it is not “capable of distinguishing” the applicant’s goods from those of others. This involves a two-step inquiry, i.e. first, looking at the “inherent adaptation” of the mark, and second, looking at whether it has acquired “factual distinctiveness” through use.
Having reached this conclusion under Section 41, the Court considered it unnecessary to determine the alternative grounds of revocation advanced by Host, including arguments based on the marks becoming generic over time.
Inherent adaptation to distinguish
Justice Burley applied the principles from the High Court’s decision in Cantarella, noting that the “ordinary signification” of a word to anyone purchasing or trading in the goods is the primary test. The Court found that “Bohemia” is a region world-famous for glassware. Therefore, to an honest trader or consumer, the word “Bohemia” in the context of glass would ordinarily signify geographical origin rather than a specific brand.
The Court was particularly swayed by the fact that other traders would likely want to use the word “Bohemia” to describe their own genuine products from that region. Justice Burley noted that the name of a place that is a known seat of manufacture for the goods in question is rarely inherently adapted to distinguish one person’s goods. Consequently, the Court found that the marks were not inherently adapted to distinguish within the meaning of Section 41(3), and further, that they were not adapted to distinguish even to any extent under Section 41(5).
Factual distinctiveness through use
Since the marks lacked inherent distinctiveness, BCP had to prove they had become distinctive in fact through extensive use before the filing dates in 2001 and 2003. BCP’s managing director, Paul Hesse, provided voluminous evidence of advertising, sponsorships, and packaging. However, the Court identified a significant flaw in this evidence: BCP had almost never used the words “Bohemia” or “Bohemia Crystal” on their own.
Instead, the words were almost always accompanied by the “701 mark”, i.e. a complex composite logo including a “W” device and the words “Made in Czech Republic”. The Court held that consumers were likely to view the 701 logo as the “badge of origin”, while the word “Bohemia” merely reinforced the geographical source of the goods. Furthermore, BCP’s evidence failed to correlate sales figures with specific trade mark use. Because BCP also sold products from other famous manufacturers like Moser, its use of “Bohemia” on storefronts was seen as descriptive of the type of goods sold rather than a brand identifier. That said, the Court concluded that the marks had not acquired factual distinctiveness at the relevant dates.
Trade Mark infringement and the good faith defense
Although the marks were ultimately found invalid, Justice Burley nevertheless considered the infringement issues on a contingent basis, in case that conclusion was incorrect. The analysis therefore proceeded on the assumption that the marks were valid, and examined whether Host’s various uses amounted to use “as a trade mark”, that is, as a badge of origin.
The Court paid particular attention to Host’s use of the preposition “by” (as in “Banquet Crystal by Bohemia”), noting that this form of expression tends to indicate a trade source rather than merely describing geographical origin. While Host argued this was descriptive, Justice Burley held that “by” naturally suggests an entity or source of origin. In the context of the catalogues and packaging, this would likely appear to a consumer as a brand name.
However, the Court concluded that, to the extent any of the impugned uses constituted trade mark use, the “good faith” defence under Section 122(1)(b) would not apply. While the defence permits use of signs to indicate geographical origin, the particular formulation “by Bohemia” conveyed an impression of trade source rather than mere origin. As such, it fell outside the scope of honest descriptive use contemplated by the provision.
That said, the Court did not find that all of Host’s uses would amount to infringement. Justice Burley expressly held that only some of the impugned uses of “BOHEMIA” would have infringed, while others would not. This underscores the fact-specific nature of the “use as a trade mark” inquiry, which depends on the overall context in which the words appear.
The claim under the Australian Consumer Law
The final major component of the case was the claim under the Australian Consumer Law. BCP argued that Host’s branding was likely to mislead consumers into thinking Host’s “Banquet” products emanated from BCP. Justice Burley rejected this claim, focusing on the lack of overlap between the two companies’ target markets.
The Court found that BCP’s customers were typically retail consumers looking for expensive, high-end giftware. In contrast, Host’s customers were professionals in the hospitality industry who purchased utilitarian glassware in bulk at low prices. These commercial buyers were seen as careful and unlikely to be misled by a broad geographical term. Justice Burley concluded that since “Bohemia” is a geographical term apt for describing glassware, any confusion in the marketplace was more likely due to the descriptiveness of the word itself rather than any misleading conduct by Host.
Key takeaways from the dispute
This decision offers several vital lessons for businesses navigating trade mark protection and enforcement in Australia.
Firstly, geographical names are difficult to monopolize. If your brand name is the name of a region famous for the goods you sell, you face a very high hurdle. Unless you can prove the name has truly eclipsed its primary geographical meaning and is seen by the public exclusively as your brand, it may be vulnerable to cancellation.
Secondly, composite use does not always protect word marks. Many businesses use a logo alongside a word mark. As this case shows, if the logo is the dominant “badge of origin,” using it may not help you prove that the word mark itself has become distinctive. Brand owners should ensure they use their word marks independently if they wish to establish a separate reputation for them.
Thirdly, market context is everything in Consumer Law. Even if a competitor uses a similar name, you cannot succeed in a misleading conduct claim if your target audiences are entirely different. A luxury brand and a bulk wholesaler operate in different spheres, and the “reasonable consumer” in those markets has different expectations.
Finally, the choice of language in descriptions matters. Host’s use of “by Bohemia” instead of “from Bohemia” contributed to the Court’s view that the phrase conveyed a trade source rather than merely indicating origin. Even subtle grammatical choices can influence whether a term is perceived as descriptive or as a badge of origin.
Conclusion
The Federal Court’s decision in Bohemia Crystal v Host Corporation shows the judiciary’s reluctance to allow any single trader to “privatize” a common geographical term that belongs in the public domain. By cancelling BCP’s word marks, the Court ensured that other honest traders remains free to describe the genuine origins of their glassware.
For BCP, the loss of these registrations was a reminder of the risks involved in choosing highly descriptive or geographical names. For Host, while it successfully defended its right to use the term “Bohemia”, the case served as a cautionary tale about the importance of careful branding and the potential pitfalls of ungrammatical “descriptive” phrasing. The judgment provides a clear and instructive illustration of the limits of trade mark protection for geographical terms in the Australian market.
It also highlights that infringement analysis, particularly in cases involving descriptive terms, is highly context-dependent and may yield different outcomes across different forms of use.
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