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Baker & McKenzie - First use gives rights in the bag

Baker & McKenzie reports that, despite Colorado Group Ltd (”CGL”) registering the word “COLORADO” covering bags, wallets, purses and backpacks, it was found in a recent case that the first use by Strandbags Group Pty Ltd (”Strandbags”) of the mark “Colorado” on handbags made Strandbags the owner of the mark “COLORADO” for handbags.

According to Baker & McKenzie, this was despite the earlier use by CGL of the COLORADO mark on backpacks, as backpacks were considered not to be goods of the same kind as handbags.

In determining who had made the first use of the mark and when, Baker & McKenzie notes that the use of a composite mark comprising the word “Colorado” and a mountain device was not considered to be use of the word mark COLORADO on its own. To compound CGL’s woes, Baker & McKenzie note that its COLORADO registration was cancelled for its goods as the word “Colorado” was found not to be inherently adapted to distinguish goods like backpacks in view of its geographical significance as the name of a state of the U.S.A. which has well-known mountains and is a rugged holiday area.

Baker & McKenzie - First use gives rights in the bag


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