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One of Australia's most iconic places, Bondi Beach, is at the centre of an international trademark tussle between a Sydney cosmetics company and multinational fashion giant Abercrombie & Fitch.
The United States retailer, which has no presence in Australia, is the registered owner of the 'Bondi Beach' trademark in the US for a range of products, including beauty lotions, body sprays and fragrances.
When Sydney company Bondi Wash applied to trademark its name in the US, it was prevented from doing so because of the similarity to Abercrombie & Fitch's existing rights.
The case has raised concerns about foreign companies gaining exclusive ownership of high-profile Australian place names in their branding.
"I think it's really disappointing," Waverley Mayor Sally Betts said.
She has directed her council to write to Abercrombie & Fitch to demand the company relinquish its trademark rights in the US, as well as contacting Federal Trade Minister Steven Ciobo's office in the hope the Minister can add his voice to the issue.
"Everybody uses the name Bondi Beach, and for it just to be restricted by one organisation in the whole of America, it just seems wrong. It's just completely wrong."
Other iconic place names that have been trademarked in the US include Uluru, which is registered to a carpet company, and Kakadu, which is registered to a cosmetics company that uses Australian native Kakadu plums in its products.
"Once upon a time, trademarks used to have much more local identities, but now you can have global branding, and often that raises tricky questions," Matthew Rimmer, a professor in intellectual property and innovation law at QUT, said.
Bondi Wash has successfully trademarked its name in Australia, as have other Bondi-based organisations, including the Bondi Icebergs and Bondi Surf Club Australia.
Companies have also trademarked Bondi-linked products in Australia, including Bondi Vet by an entertainment company, and Bondi Burger by fast food franchise Oportos.
In an effort to get its trademark approved in the US, Bondi Wash last year challenged Abercrombie's claim over the Bondi Beach trademark and two other similar marks, on the grounds it believed Abercrombie was no longer using the trademark.
"Use of the marks ... has been discontinued with the intent not to resume such use. Thus the Registrant has abandoned its trademarks," Bondi Wash stated in its petition to the US Patent and Trademark Office (USPTO).
But the response from Abercrombie was definitive:
"Abercrombie & Fitch respectfully requests that [Bondi Wash's] petition for cancellation be dismissed in its entirety, and that registration be denied."
Last month, Bondi Wash withdrew its petition in the US.
The company is pursuing an alternative classification for its trademark involving different categories such as "household cleaning preparations", "scented articles" and "all-purpose disinfectants for household use".
There are different interpretations of what constitutes an iconic mark in different countries, said Jennifer McEwan, the convenor of the trademarks committee for Australia's Institute of Patent and Trademark Attorneys.
"A mark may be iconic in Australia or other countries but not the USA," she said.
"Under USA law, geographic names can be refused registration if its geographic location is of primary significance to the relevant consumers in the USA.
"Therefore, it seems the USPTO examiner took the view that [Abercrombie's] Bondi Beach and Bondi Beach Club marks were not primarily of geographic significance to the relevant consumers in the USA."
She says the law is different in Australia.
"Yarra Valley for fruits or wine, or even Bondi Beach for clothing, are not registerable unless evidence of extensive prior use of the trademark is provided during the examination process, or if other distinctive elements are added to the name; for example, a logo."
The trademarking of iconic Australian locations by foreign companies can often lead to protracted and expensive legal challenges for small Australian companies looking to expand overseas.
"For big companies, they'll have trademark attorneys that'll survey registers and look for anything that might potentially be a conflict or impinge upon some of their clients' existing trademarks," Dr Rimmer said.
"There's important issues about access to justice in relation to some of the trademark battles; sometimes you have these disparities in respect of legal expertise and bargaining power as well.
"Sometimes it's hard for small businesses in Australia to take on much bigger entities."
Bondi Wash and Abercrombie declined to comment.
Topics: fashion, small-business, business-economics-and-finance, international-law, law-crime-and-justice, sydney-2000, australia, united-states
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