Geelong Grammar School fails bid to trademark range of “Timber” brand names

Geelong Grammar School, famous for its high country Timbertop campus attended by King Charles, has failed in a bid to trademark a range of “Timber” brand names.

One of Victoria’s most elite schools has failed in a bid to trademark a range of “Timber” brand names across hundreds of educational products and services.

Geelong Grammar School, famous for its high country Timbertop campus attended by King Charles, sought to trademark “Timbertot” for the early learning program at its Corio and Toorak campuses.

The school relied on its august history and famous alumni such as King Charles III, Missy Higgins and John Marsden to argue its case for a “family of trademarks” based on Timbertop.

This is despite the “Timber tot” name already being used by a number of businesses, including a childcare service in Brisbane and a brand of wooden educational toys in Wollongong.

There is also a cafe in Perth called Timber.

“It is envisaged that students commence at the school as a ‘Timbertot’ and then continue their Geelong Grammar School education to become a Timbertop student,” the school told an Australian Trade Marks Office hearing.

Prince Charles in conversation with pupils during a visit to Timbertop in 1970. (Photo by Keystone/Hulton Archive/Getty Images)

Hearing officer Nicholas Barbey rejected the argument, severely limiting the school’s use of the term in areas where it is “deceptively similar” to other brands.

This means educational services, including childcare, kindergartens and schooling, educational games and hospitality.

But the name can be trademarked by the school in other areas such as laptop bags, clothing, headwear, swimwear, office functions and career counselling.

The historic school, which is among the most expensive in the country, argued it had a right to hold the trademark for “Timbertot” because its protected use of the term “Timbertop” predated the other businesses with the same name.

The school said the “significant and notable reputation of ‘Timbertop’ for over 70 years will extend to its use of ‘Timbertot’ as a family of related trade marks”.

Geelong Grammar School sought to trademark “Timbertot” for the early learning program at its Corio and Toorak campuses.

Mr Barbey did not accept that Timbertop and Timbertot were “substantially identical”.

Geelong Grammar School already has 26 trademarks including its name, its Latin motto, the phrase “Learn It, Live It, Teach It, Embed It“ and “Institute of Positive Education”.

It has held a registered trademark for Timbertop since 2002, which includes use for educational services. This application was opposed by the Timberland footwear and clothing company in 2003.

It has also tried – but failed – to trademark the terms “Centre for Creative Education” and “positive education”.

The school’s lawyers argued it would suffer “particular hardship and substantial inconvenience “if the application to trademark “Timbertot” was rejected. This was not accepted by Mr Barbey, who noted that the school adjusting its “branding direction” was not a hardship or substantial inconvenience.

The high country Timbertop campus of Geelong Grammar.

The trade mark office ruled in May it would not accept the application and the school in June agreed to restrict its use of the term, taking into account the existing businesses with similar names.

Dentons Lawyers trademark experts, partner Vanessa Gore and special counsel Roanne De Menezes, said Australian schools, like other organisations, “should consider protecting their critical brands for critical services or products”.

“Indeed, in our experience, private schools are aware of the benefits that a trade mark registration provides them.”

Geelong Grammar declined to comment.

The Timber Tots childcare centre was not aware of the application until contacted by the Herald Sun, but did not comment by deadline.

Businesses have two months to oppose the decision once it is published.

Originally published as Geelong Grammar School fails bid to trademark range of “Timber” brand names