Part 22 - Section - Capable of Distinguishingmanuals.ipaustralia.gov.au/trademarks/Part_22.pdfPart...

Part 22 Section 41 - Capable of Distinguishing

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Effective Date: 01 April 2019

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Part 22




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Table of Contents Part 22 Section 41 - Capable of Distinguishing ..................................................................... 5

Relevant Legislation .............................................................................................................. 5

1. Registrability under section 41 of the Trade Marks Act 1995 ............................................. 6

2. Presumption of registrability .............................................................................................. 8

3. Inherent adaptation to distinguish .................................................................................... 10

4. Trade marks considered sufficiently inherently adapted to distinguish ............................. 14

5. Trade marks considered to have limited inherent adaptation to distinguish ..................... 15

6. Trade marks having no inherent adaptation to distinguish ............................................... 16

7. Examination .................................................................................................................... 19

Registrability of various kinds of signs ................................................................................. 20

8. Letters ............................................................................................................................. 21

9. Words ............................................................................................................................. 24

10. Phonetic equivalents, misspellings and combinations of known words .......................... 27

11. Words in languages other than English ......................................................................... 28

12. Slogans, phrases and multiple words ............................................................................ 32

13. Common formats for trade marks .................................................................................. 33

14. New terminology and "fashionable" words..................................................................... 38

15. Geographical names ..................................................................................................... 44

16. Surnames...................................................................................................................... 53

17. Name of a person.......................................................................................................... 57

18. Summary of examination practice in relation to names.................................................. 59

19. Corporate names .......................................................................................................... 61

20. Titles of well known books, novels, stories, plays, films, stage shows, songs and musical works .................................................................................................................................. 62

21. Titles of other books or media ....................................................................................... 64

22. Numerals ...................................................................................................................... 65

23. Combinations of letters and numerals ........................................................................... 66




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24. Trade marks for pharmaceutical or veterinary substances ............................................ 67

25. Devices ......................................................................................................................... 68

26. Composite trade marks ................................................................................................. 70

27. Trade marks that include plant varietal name ................................................................ 72

Annex A1 Section 41 prior to Raising the Bar...................................................................... 73

Annex A2 Flowchart of "Capable of Distinguishing"............................................................. 75




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Relevant Legislation The Act

Section 6 Definitions - sign

Section 17 What is a trade mark?

Section 33 Application accepted or rejected

Section 41 Trade mark not distinguishing applicant’s goods or services

1. Registrability under section 41 of the Trade Marks Act 1995



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Pursuant to section 41, an application for registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods and/or services from the goods and/or services of other persons.

Section 41 does not apply to certification trade marks. Section 177 deals with certification trade marks and the capacity to distinguish. For more information in relation to certification trade marks and the capacity to distinguish see:

• Part 35 Certification Trade Marks – 4. The registrability of certification trade marks

1.1 The 1955 Act

Prior to the introduction of the 1995 Act, registrability of trade marks was governed by sections 24, 25 and 26 of the Trade Marks Act 1955. Any trade marks that met the tests for registrability in terms of being distinctive and inherently adapted to distinguish were accepted for registration in Part A of the Register.

Trade marks which did not meet the stringent tests for Part A were considered under section 26 of the Act for registration in Part B of the Register. Trade marks could be accepted in Part B if they were distinctive or "capable of becoming distinctive."

Whether registrable in Part A or Part B, trade marks had to have some degree of inherent adaptation to distinguish. The phrase "capable of becoming distinctive" is approximately equivalent to the expression "capable of distinguishing" which appears in section 41 of the 1995 Act.

1.2 Intellectual Property Laws Amendment (Raising the Bar) Act 2012

Section 41 of the Trade Marks Act 1995 was amended by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. The repealed section 41 is set out in full in Annex A1 to this Part of the Manual.

Raising the Bar came into effect on 15 April 2013. It does not contain an application or savings provision in relation to the amendments to section 41. As such the application of section 41 is regulated by section 7 of the Acts Interpretation Act 1901.

As stated in Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50 the filing date is the critical date for determining whether the amended or repealed version of section 41 applies. The amended section 41 applies to trade mark applications with a filing date on or after 15 April 2013. The repealed provisions continue to apply to trade mark applications with a filing date before 15 April 2013.




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Note: Section 6 of the Act defines the filing date of a divisional application as the filing date of the parent application. For more information in relation to Raising the Bar and divisional applications see: • Part 12 Divisional Applications – 9. Divisional Applications and the Intellectual Property Laws Amendment (Raising the Bar) Act 2012

2. Presumption of registrability



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2. Presumption of registrability The report of the Working Party to Review the Trade Marks Legislation, Recommended Changes to the Australian Trade Marks Legislation (AGPS July 1992), referred to the concept of presumption of registrability. However the expression does not appear in the Act itself.

Justice Branson discusses the concept of the Registrar being satisfied which is an expression used in section 33 and 41 (prior to Raising the Bar). In Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 at 503 (‘Oregon’) she said:

[Section] 33 of the Act ... has, in effect, altered the burden of proof generally so far as acceptance of applications is concerned. Section 33(1) provides that the Registrar must accept the application unless satisfied that the application has not been made in accordance with the Act, or that there are grounds for rejecting it. The 1955 Act, by s 44, required the Registrar to accept the application only if satisfied that there was no lawful ground of objection to it. The terms of s 33(1) of the Act are presumably intended to reflect the recommendation of the working party that the Act "should be expressed in terms which make it clear that there is to be a presumption of registrability when examining an application for registration": (p 42 of the report).

2.1 Prior to Raising the Bar Amendments

In Oregon Branson J made it clear that sections 41(4) to 41(6) of the now repealed section 41 were an exception to the presumption of registrability. If the Registrar was not satisfied that a trade mark was capable of distinguishing, the matter was not to be resolved in favour of the applicant at that point. Rather section 41(4) required the Registrar to resolve the doubt according to the decision-making process in sections 41(5) and 41(6). This effectively shifted the onus to the applicant.

2.2 Raising the Bar Amendments

Section 41 was repealed and re-enacted by the Intellectual Property Laws Amendment (Raising the Bar) Act 2012. The changes to section 41 clarify that the presumption of registrability does apply to section 41. As stated in the Explanatory Memorandum, Intellectual Property Laws Amendment (Raising the Bar) Bill 2011 at page 146:

The changes are intended to clarify that the presumption of registrability, as provided for in section 33, does apply to section 41. This is achieved by removing the reference to the decision-making process in section 41, and instead focusing on the characteristics that a mark must possess for it to be capable of distinguishing. The intention is that, if the Registrar is equally unsure of whether the mark is or is not capable of distinguishing, that doubt should be resolved in the applicant’s favour.

2. Presumption of registrability



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To ensure that the presumption of registrability applies, the criteria for the trade mark’s capacity to distinguish are framed negatively by defining the circumstances in which a trade mark is not capable of distinguishing. Consistent with the presumption, this will focus the Registrar’s enquiry on what must be wrong with the mark before the Registrar is entitled to reject it.

Note that while the amendment ensures that the onus rests with the Registrar during examination, it is not intended to require that the trade mark should clearly not be registered. Rather, as with other grounds it is intended that the delegate need only be satisfied that a ground exists on the balance of probabilities.

3. Inherent adaptation to distinguish



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The first question to be determined in deciding whether a trade mark is capable of distinguishing the applicant’s goods and/or services is: to what extent is the applicant's trade mark inherently adapted to distinguish their goods or services?

All trade marks examined will fall into one of three categories:

a. trade marks that are sufficiently inherently adapted to distinguish and are therefore prima facie capable of distinguishing;

b. trade marks that have some limited inherent adaptation to distinguish but are not prima facie capable of distinguishing;

c. trade marks that have no inherent adaptation to distinguish.

Inherent adaptation is a concept that refers to a quality of the trade mark itself and cannot be acquired through use in the market place. In Burger King Corporation v Registrar of Trade Marks (1973) 128 CLR 417 at 424 (‘The Whopper Case’) Gibbs J said in relation to paragraph 26(2)(a) of the 1955 Act:

Inherent adaptability is something which depends on the nature of the trade mark itself - see Clark Equipment Co v Registrar of Trade Marks [(1964) 111 CLR 511 at 515 - the Michigan case] - and therefore is not something that can be acquired; the inherent nature of the trade mark itself cannot be changed by use or otherwise.

In Michigan Kitto J at 513 sets out the criteria for deciding whether a trade mark is inherently adapted to distinguish:

That ultimate question must not be misunderstood [that is, "whether the mark is registrable as being 'adapted to distinguish' the applicant's goods"]. It is not whether the mark will be adapted to distinguish the registered owner's goods if it be registered and other persons consequently find themselves precluded from using it. The question is whether the mark, considered quite apart from the effects of registration, is such that by its use the applicant is likely to attain his object of thereby distinguishing his goods from the goods of others. In Registrar of Trade Marks v W. and G. Du Cros Ltd. (1913) AC 624 at 634, 635) Lord Parker of Waddington having remarked upon the difficulty of finding the right criterion by which to determine whether a proposed mark is or is not "adapted to distinguish" the applicant's goods defined the crucial question practically as I have stated it, and added two sentences which have often been quoted but to which it is well to return for an understanding of the problem in a case such as the present. His Lordship said: "The applicant's chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it, upon or in connection with their own goods. It is apparent from the history of trade marks in this country that both the Legislature




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and the Courts have always shown a natural disinclination to allow any person to obtain by registration under the Trade Marks Acts a monopoly in what others may legitimately desire to use." The interests of strangers and of the public are thus bound up with the whole question, as Hamilton L.J. pointed out in the case of R. J. Lea, Ltd. 30 RPC 216 at 227; but to say this is not to treat the question as depending upon some vague notion of public policy; it is to insist that the question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it.

In F. H. Faulding & Son Ltd v Imperial Chemical Industries of Australia and New Zealand Ltd. (1965) 112 CLR 537 at 555 (‘Barrier Cream Case’), Kitto J summarised the appropriate inquiry as follows:

The question to be asked in order to test whether a word is adapted to distinguish one trader's goods from the goods of all others is whether the word is one which other traders are likely in the ordinary course of their business and without any improper motive, to desire to use upon or in connection with their goods.

This summary is a very useful one for the purposes of examination and should form the basic inquiry when examining a trade mark's capacity to distinguish. It was approved by the Federal Court of Australia in Chancellor, Masters and Scholars of the University of Oxford t/a Oxford University Press v The Registrar of Trade Marks (1990) 17 IPR 509 (‘Oxford’), and more recently in Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579 (‘Cranberry Classic’).

More recently, the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 (‘Cantarella’) endorsed that the proper test for assessing the inherent capacity of a trade mark to distinguish still remains that articulated by Kitto J in Michigan. In doing so, the majority discussed the meaning of Kitto J’s words:

[T]he question whether a mark is adapted to distinguish be tested by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated only by proper motives - in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess - will think of the word and want to use it in connection with similar goods in any manner which would infringe a registered trade mark granted in respect of it [Emphasis added];

in particular the purport of the bolded words. The majority made the following observations at [59]:




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The principles settled by this Court (and the United Kingdom authorities found in this Court to be persuasive) require that a foreign word be examined from the point of view of the possible impairment of the rights of honest traders and from the point of view of the public. It is the “ordinary signification” of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a “direct reference” to the relevant goods (prima facie not registrable) or makes a “covert and skilful allusion” to the relevant goods (prima facie registrable). When the “other traders” test from Du Cros is applied to a word (other than a geographical name or a surname), the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical. In relation to a word mark, English or foreign, “inherent adaption to distinguish” requires examination of the word itself, in the context of its proposed application to particular goods in Australia.

Whilst it is noted that the Cantarella decision dealt with non-English words, the judgement of the majority is relevant to the inherent adaptation of any word or words to distinguish. Specifically, the majority also stated:

[70] In accordance with the principles established in Mark Foy’s and restated in Clark Equipment, Faulding and Burger King, determining whether a trade mark is “inherently adapted to distinguish”, as required by s 41(3), requires consideration of the “ordinary signification” of the words proposed as trade marks to any person in Australia concerned with the goods to which the proposed trade mark is to be applied. [71] As shown by the authorities in this court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the “ordinary signification” of a word, English or foreign, is established an inquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods. If a foreign word contains an allusive reference to the relevant goods it is prima facie qualified for the grant of a monopoly. However, if the foreign word is understood by the target audience as having a directly descriptive meaning in relation to the relevant goods, then prima facie the proprietor is not entitled to a monopoly of it. Speaking generally, words which are prima facie entitled to a monopoly secured by registration are inherently adapted to distinguish.

In summary, the Cantarella decision makes clear that when considering the inherent distinctiveness of a trade mark, consideration should first be given to the ‘ordinary signification’ (or ‘ordinary meaning’) of the words comprising the trade mark to anyone in Australia purchasing, consuming or trading in the relevant goods/services. Consideration should then be given as to the likelihood of other persons desiring to use the words for the




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sake of their ordinary signification, in keeping with the principles espoused in the Michigan case.

4. Trade marks considered sufficiently inherently adapted to distinguish



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4. Trade marks considered sufficiently inherently adapted to distinguish

If the trade mark as a whole is not one which other traders are likely to desire to use without improper motive in connection with their own goods or services, it will have sufficient inherent adaptation to distinguish (prima facie capable of distinguishing) such that it meets the requirements of section 41.

4.1 Examples of trade marks considered sufficiently inherently adapted to distinguish

The following are examples of trade marks that are considered to be sufficiently inherently adapted to distinguish and are therefore acceptable without evidence of use:

• SURNAMES that are not commonplace (see paragraph 16)

• PERSONAL AND COMPANY NAMES that are not commonplace (see paragraphs 17, 18 and 19)

• SUPERSEDED GEOGRAPHIC NAMES that have no connection with the goods such as BYBLOS (class 25) which is the ancient name for the Lebanese town of Jubayl (see paragraph 15.4 below)

• WORLD OR CITY MARKS which contain a reference to an attribute of the goods or services such as SPEED WORLD, COMFORT CITY (see paragraph 13.5)

• MOST COINED WORDS such as SURELOCK (Class 12), CLICKFAST (Class 6), TRAKGRIP (Class 12)

• EXPRESSIONS not in common use in respect of the goods and/or services: OFF THE WALL (Class 25), CHOOKEY POOH (Class 1), THE COOL CONDITIONERS (Class 31), MUSCLE MACHINE (Class 28), PORKY BITS (Class 29)

• UNLIKELY GRAMMATICAL CONSTRUCTIONS particularly those that incorporate a misspelling such as SHOPRITE (Class 42), BESAFE (Class 9), BEEF GRO (Class 5), GROWOOL (Class 1), SAFEVUE (Class 12), BI-LO (Class 42)

• SLOGANS with only indirect reference such as COLOUR ME BEAUTIFUL (Class 3), PARDON OUR SCAFFOLDING (Class 6)

5. Trade marks considered to have limited inherent adaptation to distinguish



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5. Trade marks considered to have limited inherent adaptation to distinguish

Trade marks considered to have limited inherent adaptation to distinguish include those which other traders are more likely to want to use, legitimately, in the ordinary course of their business. They include, for example, common surnames and words and expressions which may be required by other traders to describe or extol their goods/services.

For example:

• J & P Coats Ltd's Appn (1936) 53 RPC 355 at 380 (‘Sheen’) where the court found that the word SHEEN when applied to cotton was ‘clearly not a merely laudatory word like "perfection" or "best" or "classic” or "universal" or "artistic"’ but was in that category of words ‘which describe the character of the goods, but are not the only or natural words which would be chosen for that purpose’. Lustre was considered to be a more appropriate and natural term when applied to the goods.

• Chunky Trade Mark [1978] FSR 322, where on the basis of extensive evidence, it was held that the word CHUNKY was acceptable for dog food even though it had a relevant dictionary definition.

In cases such as these, the trade marks are, to some extent, inherently adapted to distinguish, but the extent of adaptation is low and is therefore not sufficient for the trade marks to be accepted without evidence or other circumstances.

If evidence of use establishes that the trade mark already distinguishes the applicant's goods or services, then the ground for rejection will be overcome. Where evidence of intended use or other circumstances is required, it need only show that, at some future date, the trade mark will distinguish the goods or services of the applicant from those of other traders. The more a sign with some adaptation to distinguish is used, or its intended use is promoted, the less likely it will be that other traders, having no improper motive, will need to use that sign in connection with their goods or services.

Overall, section 41(4) and the repealed section 41(5) require the Registrar to consider a balance of the shortfall of inherent adaptation against the:

• extent of use (in time, area, volume or market share terms) - a quantitative question

• manner of use - a qualitative question

• any other circumstances.

For more information about the evidence requirements for trade marks with limited inherent adaptation to distinguish see:

• Part 23 Overcoming Grounds for Rejection under Section 41 – including Evidence of Use

6. Trade marks having no inherent adaptation to distinguish



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6. Trade marks having no inherent adaptation to distinguish From a practical point of view signs that are considered not to any extent inherently adapted to distinguish the designated goods/services from the goods or services of other persons are those that:

• are presently in common use and serve directly to designate the goods or services; or

• are otherwise clearly required by other traders in the ordinary course of their business.

It is important to note here that the fact that a term is not in use in the relevant trade should be given considerable weight and will usually preclude a finding that it is not to any extent inherently adapted to distinguish.

Trade marks that have no inherent adaptation to distinguish the goods or services of one trader from those of other traders include words which are: major geographical names like OREGON, MICHIGAN and OXFORD; highly laudatory words like PERFECTION and BEAUTIFUL; a word such as EUTECTIC which is the only word applicable to particular goods; and words which are apt for normal description of the goods or services concerned as WHOPPER was found to be in relation to hamburgers.

6.1 The Notes accompanying section 41

The following note in section 41 is intended to help the reader to understand the contents and legal consequences of the provision.

Note 1: Trade marks that are not [to any extent] inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

a. the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

b. the time of production of goods or of the rendering of services.

This is a very broad statement but does provide a good guide to trade marks that will not be considered, prima facie capable of distinguishing the applicant's goods and/or services. The words consist wholly of are a reminder that, if the trade mark is a composite trade mark or is represented in a manner that is striking or unusual, this may overcome the problem that the words or devices within the trade mark are otherwise not inherently adapted to distinguish the goods or services of one trader from those of another.

Prior to the Acts Interpretation Amendment Act 2011 it had long been the fact that although notes to the Act may draw attention to information that may assist the reader in the




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understanding of the contents or legal consequences of certain provisions or how to comply with them, such notes were not actually part of the Act. Courts could take them into account when deciding on the meaning of a provision but were not obliged to do so (see Cranberry Classic at 589).

The Acts Interpretation Amendment Act 2011 amended section 13 of the Acts Interpretation Act 1901. The amendments make it clear that all material in an Act, from the first section to the end of the last Schedule, is part of the Act. This includes explanatory notes.

A ground for rejection may be raised in respect of the matters mentioned in the notes appended to section 41. However when raising a ground for rejection based on these issues examiners should always take care to phrase the ground for rejection in such a way that it is clear that, while the contents of the note may form the basis of the ground, the reason for raising it is the trade mark's lack of inherent adaptation to distinguish.

6.2 Distinctive in fact

To achieve acceptance for a trade mark that is considered to be totally lacking in inherent adaptation to distinguish, the applicant must file evidence of use which establishes that the trade mark did distinguish the designated goods before the relevant filing date. Additional evidence later than this date and material relating to other circumstances may also be filed, but the crucial matter is the demonstration of the trade mark being distinctive in fact as at the application's filing date.

The term distinctive in fact does not appear in the legislation, but appears at page 41 of the report Recommended Changes to the Australian Trade Marks Legislation. In Oregon Branson J at 503 quotes the following excerpt from that report:

it is presently possible to establish that a mark is distinctive in fact and yet it will be held in law to be not registrable, as there is a requirement that a mark possess some degree, however small, of inherent adaptedness to distinguish. Marks falling into this category are typically geographical names and laudatory or descriptive words, and therefore likely to be used by other traders in the legitimate description of their goods or services." (Emphasis added).

Her Honour makes it clear that the term is an appropriate one to use in relation to trade marks with no inherent adaptation to distinguish.

If the evidence demonstrates that the trade mark is distinctive in fact as at the application's filing date, the trade mark will be taken to be capable of distinguishing.

It should be noted however, that a mere demonstration of use does not necessarily equate to distinctiveness. In British Sugar PLC v James Robertson & Sons Ltd [1996] RPC 281 (‘Treat’) at 302 Jacobs J commented:

There is an unspoken and illogical assumption that 'use equals distinctiveness'. The illogicality can be seen from an example: no matter how much use a manufacturer




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made of the word 'Soap' as a purported trade mark for soap, the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark.

In Oregon at 509, Branson J refers to Justice Jacob's observations in Treat when she said:

Jacobs J observed, no doubt accurately, … that evidence of promotion and use does not, without more, demonstrate distinctiveness. Nonetheless, common sense suggests that significant promotion and use of a trade mark among people concerned with the relevant market will have a tendency to enhance, rather than diminish, the trade mark's capacity to distinguish the goods in respect of which it is used from the goods of others. Certainly, the absence of evidence of promotion and use is likely to assume significance where distinctiveness resulting from use is in issue.

In the Oregon case itself, in addition to evidence of promotion and 15 years' use, the applicant placed before the Court affidavit evidence from consumers, wholesalers and retailers of its goods. The overall impact of such evidence for her Honour was an indication that persons concerned with relatively small-scale power cutting equipment associated the word OREGON with a particular range of such goods. Her Honour went on to say at 509:

It is not, in my view, necessary as a matter of law for a statistically sound market survey to be undertaken before it can be established that a trade mark does distinguish an applicant's goods from the goods of another person. In each case the evidence relied on by the applicant is to be evaluated in the light of any evidence tending to the contrary effect and having regard to the evidence which the applicant might reasonably be expected to be able to obtain in all the circumstances of the case.

The applicant must be able to show that as at the filing date of the application the public had come to regard the sign as a badge of origin. For more information about evidence requirements for trade marks with no inherent adaptation to distinguish see:

• Part 23 Overcoming Grounds for Rejection under Section 41 – including Evidence of Use – 5. Specific evidence requirements for trade marks with no inherent adaptation to distinguish

7. Examination



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7. Examination

Where the examiner believes that a ground for rejection exists, the ground should be expressed in a manner that is specific and well documented if possible. Examiners may also ‘rely on their general knowledge, their powers of deduction and detection and their understanding of current market developments’ as expressed by the Registrar's delegate in Re Nations Bank Corp's Appn (1998) 45 IPR 345 at 351 (‘World Card’).

In such instances, documented material may not be available to support the ground for rejection and this will make it more difficult to sustain further on in the examination process. Examiners should therefore be very careful before basing conclusions on unsupported assertions that are not matters of general knowledge or notorious fact and cannot ultimately be supported by written evidence.

Where references are used, they should be supplied to the applicant. Where case law is relied upon, accurate references should be supplied, preferably giving page references where crucial arguments can be found. If those arguments are encapsulated in one or more lines it may be just as convenient to quote those lines in full.

Registrability of various kinds of signs



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Registrability of various kinds of signs Section 17 of the Act defines a trade mark as:

a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.

Section 6 of the Act defines a sign as including:

the following or any combination of the following, namely, any letter, word, name, signature, numeral, device, brand, heading, label, ticket, aspect of packaging, shape, colour, sound or scent.

A trade mark applicant may nominate any sign which can be represented graphically as their trade mark (see s40). Whether this sign will function as a trade mark cannot be assessed at the initial stage of examination. Each application must be taken on face value, and be considered under section 41 in the usual fashion. The question of whether a sign in fact does function as a trade mark will only become an issue on consideration of evidence of use, should this be supplied during the course of examination

Trade marks consisting of an aspect of packaging, shape, colour, sound scent or other non traditional signs are considered in Part 21 of this Manual.

• Part 21 Non-traditional Signs

Paragraphs 8 to 26 below consider the treatment of other signs falling within the definition.

8. Letters



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8. Letters

8.1 Single letter trade marks

Single letter trade marks without “get up” are generally not prima facie capable of distinguishing. The likelihood of other traders needing to use a simple, unembellished single letter in the form of initials or abbreviations is quite high (e.g. the letter M is commonly understood to indicate “mobile” in relation to phones and the letter E is commonly used to indicate a wide fitting in relation to shoes). One letter trade marks, unless represented in an unusual manner, generally possess limited inherent adaptation to distinguish and usually require evidence of use.

8.2 Two letter trade marks

Two letter marks without “get up” will generally be considered prima facie capable of distinguishing if there is no descriptive significance in the letters AND one or all of the following applies:

• the relevant goods or services are narrow in scope; OR

• the relevant goods or services are of a specialised nature; OR

• the combination forming the trade mark is a comparatively unusual one (e.g. one involving X, Y, Z, or U).

Two letter trade marks in common use in a specific field will usually not be prima facie capable of distinguishing. For example GT and LS are used by a number of traders in class 12 to indicate performance or luxury levels and do not serve to distinguish one trader’s goods from another’s.

Two letter trade marks with dictionary meanings should be examined on the basis of their definition. If they convey a descriptive meaning a ground for rejection is appropriate. If they do not convey a descriptive meaning then they are capable of distinguishing. Words such as “UP”, “NO” or “HE” would fall in this category, whether in upper or lower case. This is based on the UK practice as outlined in I.Q. trade mark [1993] RPC 379 at 381. However the inclusion of punctuation could alter the identity of the word. “U.P.” would most likely be seen as letters rather than a word and therefore examined on that basis.

8.3 Three or more letter trade marks

Trade marks consisting of three or more letters are prima facie capable of distinguishing because there is likely to be less need for use of these combinations. However they will lack inherent adaptation to distinguish if they are well known acronyms or abbreviations used on or in relation to the goods and/or services concerned.

8. Letters



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8.4 Monograms

Where a monogram is a combination of letters entwined in such a way as to not show any sequential order it will be considered to be prima facie capable of distinguishing.

8.5 Abbreviations and acronyms

Letter trade marks, irrespective of the number of letters they contain, that are recognised abbreviations for words which are not capable of distinguishing are themselves not prima facie capable of distinguishing. For example:

• "OJ" (Orange Juice) is not inherently adapted to distinguish soft drinks.

• "BYO" (Bring Your Own) is not inherently adapted to distinguish restaurant services.

• "ROM" (Read Only Memory) is not inherently adapted to distinguish certain goods in class 9.

Other letter combinations could attract grounds for rejection because they are often used as an indication of quality e.g. "AAA".

8.5.1 Acronym/Abbreviation combination trade marks

A trade mark comprising an acronym and other material which serves only to emphasise the acronym or does not diminish the impact of the acronym, is generally considered to have a low level of inherent adaptation to distinguish. This is because the inclusion of a potentially registrable element on its own does not render the trade mark as a whole prima facie capable of distinguishing (see Lawrence J comments in Diamond T at 380).

A trade mark comprising an acronym and plain words would be considered in the same manner. However a trade mark must be considered in its entirety and if a trade mark containing an acronym also contains other material of a significant nature, the combination could be prima facie capable of distinguishing. Therefore, the positioning of the acronym and whether it reinforces the descriptive or direct reference contained within the trade mark, may affect whether a section 41 ground for rejection is appropriate.

For example, an application for:

• OJ ORANGE JUICE would not be inherently adapted to distinguish beverages as OJ is a known abbreviation of Orange Juice.

• CERTIFIED PRACTICING RISK EVALUATION AUDITOR (CPREA) may not be prima facie capable of distinguishing risk evaluation services as the acronym does no more than abbreviate the descriptive words. Regardless of whether the acronym is known in the relevant trade, if the size or placement does not add to the distinctive character of the trade mark as a whole, the addition of the acronym does not render the trade mark capable of distinguishing.

8. Letters



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• CPREA Certified Practicing Risk

Evaluation Auditor

would be inherently adapted to distinguish risk evaluation services as the size and placement of the acronym renders the trade mark, as a whole, capable of distinguishing.

8.6 Words the phonetic equivalent of letters

It will generally not be appropriate to base a ground for rejection simply on the fact that a word is a phonetic equivalent of a letter or letters. However if the letters are not capable of distinguishing then the phonetic equivalent may not be acceptable. For example, OJAY is no better than OJ for soft drinks as both versions are in use in the trade.

8.7 Punctuated Words

Punctuation may take the form of full stops, stars, hearts or other graphic elements. Punctuated words consisting of three or more letters will normally be treated as words rather than letters. The longer the word, the more likely it is that it will be read as a word rather than as a series of initials (see Re Appn by Waterbed Association of Retailers and Manufacturers (1990) 20 IPR 605 (‘W.A.R.M.’)). This is particularly so if the word in question is a known dictionary word.

8.8 Trade marks containing letters and other material

A trade mark comprising one letter and other material which serves only to emphasise the letter or does not diminish the impact of the letter, is generally considered to have a low level of inherent adaptation to distinguish.

The addition of mere borders or decorative features of a non-significant character to trade marks consisting of one letter may not create a trade mark which is sufficiently adapted to distinguish. However a trade mark must be considered in its entirety and if a trade mark containing one letter also contains other material of a significant nature, the combination could be prima facie capable of distinguishing. For guidance on this subject, see Diamond T.

9. Words



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9. Words

Words fall within the definition of a sign and the great majority of trade marks contain or consist of words. Descriptive words which are clearly required for use by other traders lack inherent adaptation to distinguish one trader’s goods and/or services from those of other traders. To be registrable, applications consisting solely of such words would need to be supported by evidence establishing that the trade mark did distinguish at the time of filing.

Descriptive words which have a low level of inherent adaptation to distinguish are also not prima facie capable of distinguishing and evidence and/or consideration of other circumstances would be needed to enable acceptance of such applications.

9.1 Words not inherently adapted to distinguish

These may include words which are used as indications of kind (including the name of the goods or services themselves), quality, quantity, intended purpose, value, geographical origin, obvious phonetic equivalents and misspellings of these, or indications as to the time of production of the goods or the rendering of the services.

Traders should not be granted a monopoly in words such as these which other traders legitimately need to use in describing or extolling their goods or services or to indicate the origin of their goods or services (unless they are able to establish that the trade mark did distinguish at the time of filing). As Lord Parker stated in the W & G Du Cros Ltd’s Appn [1913] 30 RPC 660 at 672 (quoted by Kitto J in Michigan at 513):

The applicant’s chance of success in this respect (i.e. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend on whether other traders are likely, in the ordinary course of their business, and without any improper motive, to desire to use the same mark or some mark nearly resembling it, upon or in connection to their own goods.

9.2 Kind

This includes the name of the goods or services claimed and any words recognised as indicating size or type. Similarly, generic descriptions such as the name of a plant variety, and words which are the only available description for the goods would lack any inherent adaptation to distinguish (see Eutectic Corp v Registrar of Trade Marks (1980) 32 ALR 211). The words SEDAN and STATION WAGON are commonly used to indicate vehicle size in the auto trade and would not be acceptable for cars. Words like LARGE and SMALL would be difficult to register for any goods or services.

For guidance, see the Whopper case (1973) 128 CLR 417 (‘Whopper’); Matsushita Electrical Industrial Co Ltd's Appn (1989) 15 IPR 125 (‘Junior’); Colgate & Co's Appn (1913) 30 RPC 262 (‘Ribbon Dental Cream’); Associated Biscuits Ltd's Appn (1984) IPD 6133 (‘Sticklets’); Red Tulip Chocolates Pty Ltd's Appn (1984) 2 IPR 388 (‘Windsor Sticks’).

9. Words



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9.3 Quality

Laudatory words or word combinations such as SUPERIOR, GOOD, BEST and NUMBER ONE are indications of quality commonly used by traders to extol the virtues of their goods and/or services and are devoid of inherent adaptation to distinguish. Other words or word combinations such as CLASSIC, TIMELESS, WARM or GREAT TASTING would not be inherently adapted to distinguish some goods or services but may be capable of distinguishing others.

For guidance, see Joseph Crosfield & Sons Ltd's Appn (1909) 26 RPC 837, (‘Perfection’); Corning Glass Works Appn (1985) IPD 8061 (UK) (‘Magic’); Hawke (Aust) Ltd's Appn (1988) AIPC 90-525 (‘Timeless Creation’); Thorne & Co Ltd v Sandow Ltd (1912) 29 RPC 440 (‘Health’).

9.4 Quantity

Indications of quantity are frequently used by traders for a wide range of goods and services and are not prima facie capable of distinguishing. Indications of amount, including reference to numerals, are needed to indicate volume, area, model or batch number, and would be unlikely to function as trade marks (see Registrar of Trade marks v Muller (1980) 31 ALR 177 and also paragraphs 22 and 23 of this Part).

9.5 Intended purpose

Some words that describe the function of a range of goods or the result of a range of services are not inherently adapted to distinguish. For example: STICKS TO METAL describes a use to which glue can be put; ROACH FREE describes the end result of pest eradication services. In respect of printed material and software, this would include trade marks which consist of a mere description of the subject matter contained therein.

For guidance, see Wilkinson Sword Ltd's Appn (1989) 12 IPR 138 (‘Pivot’); Samboy Products Appn (1960) 30 AOJP 579 (‘Barbeque’); Plastic Inc's Appn (1986) 7 IPR 111 (‘Hi-Heat’); Jove Publication Inc's Appn (1984) IPD 6136 (UK) (‘Second chance at love’); Intermed Communications Inc's Appn (1985) AIPC 90-256 (‘Nursing 79’); "The Chef" trade mark [1979] RPC 143 (Board of Trade).

9.6 Value

Words which emphasise the worth, importance or value of a product or service are not generally inherently adapted to distinguish. Examples are TWO FOR ONE, MORE and WORTH THEIR WEIGHT IN GOLD (see Keystone Steel & Wire Co's Appn (1924) 19 AOJP 750 (‘Square Deal’).

9.7 Time of production

9. Words



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Trade marks consisting of references to a time frame when the goods were produced or when the services are to be available are not inherently adapted to distinguish. This could include expressions such as READY IN ONE HOUR for photographic development, VINTAGE 1990 for wines or AUTUMN ISSUE for magazines.

10. Phonetic equivalents, misspellings and combinations of known words



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10. Phonetic equivalents, misspellings and combinations of known words

Words consisting of obvious phonetic equivalents, simple combinations, misspellings, minor changes or trifling variations of descriptive words are not prima facie capable of distinguishing. However, unlikely grammatical constructions of words which would otherwise attract grounds for rejection, including inversions, play on words and portmanteau words (two words telescoped together), may be inherently adapted to distinguish.

Although the word "invention" is not mentioned in the Act, the concept is still of relevance in assessing whether a word is capable of distinguishing. Words with a degree of invention usually possess a capacity to distinguish. Existing case law on what constitutes invention is relevant in giving guidance on these matters. As discussed in the case law, some grammatical constructions which would not be inherently adapted to distinguish are:

• The addition of a diminutive or a short and meaningless syllable to a known word (see Eastman Photographic Material Co's Appn (1898) 15 RPC 476 (‘Solio’)).

• Minor variations in spelling

• Adjectival form of words (see Sir Titus Salt's Appn (1894) 11 RPC 518 (‘Eboline’) and also Angelides v James Stedman Henderson Sweets Ltd (1927) 40 CLR 43 (‘Minties’)).

• Combinations of two or more known words (see De Cordova v Vick Chemical Co (1951) 68 RPC 103 (‘Vapo-Rub’)).

11. Words in languages other than English



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The same principles apply to trade marks consisting of non-English words as with English words, in that it is their ordinary signification which is to be considered. In Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48, the majority discussed foreign words at [45]:

45. Establishing the "ordinary signification" of a trade mark consisting of a word is just as critical if the word is to be found in a dictionary of a foreign language. This is particularly so when an objection to registrability is based on an assertion that the mark is not an invented word because it makes direct reference to the character or quality of the goods in question. The Solio Case [1] concerned the registrability of "SOLIO" for photographic papers. It had been contended that "solio" (a word in Italian and Latin) was not an invented word and moreover was a word containing a "reference" to the goods. Lord Macnaghten stated the principle to be applied to a word put forward as an invented word:

"If [a word] is an invented word, if it is 'new and freshly coined' (to adapt an old and familiar quotation), it seems to me that it is no objection that it may be traced to a foreign source, or that it may contain a covert and skilful allusion to the character or quality of the goods. I do not think that it is necessary that it should be wholly meaningless."

46. That was followed by Parker J (as his Lordship then was) in Philippart v William Whiteley Ltd [2] ("the Diabolo Case") when he found a trade mark consisting of the Italian word "diabolo" unregistrable, because it applied to a well-known game in England called "the devil on two sticks", for which reason it could not be treated as an "invented word". Parker J explained:

"To be an invented word, within the meaning of the Act, a word must not only be newly coined in the sense of not being already current in the English language, but must be such as not to convey any meaning, or at any rate any obvious meaning, to ordinary Englishmen."

47. In Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd [3] ("Howard") [(1946) 72 CLR 175; [1946] HCA 15], Dixon J stated what was required for a word to qualify as an invented word. Citing Lord Macnaghten in the Solio Case, his Honour said that although a word should be:

"substantially different from any word in ordinary and common use ... [it] need not be wholly meaningless and it is not a disqualification 'that it may be traced to a foreign source or that it may contain a covert and skilful allusion to the character or quality of the goods.'"

Importantly, at [48] they state:




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“These authorities show that it is not the meaning of a foreign word as translated which is critical, although it might be relevant. What is critical is the meaning conveyed by a foreign word to those who will be concerned with the relevant goods.”

[1] Eastman Photographic Materials Company v Comptroller-General of Patents, Designs, and Trade-marks [1898] AC 571 (“the Solio Case”),

[2] Philippart v William Whiteley Ltd [1908] 2 Ch 274 ("the Diabolo Case")

[3] Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 175; [1946] HCA 15 ("Howard"),

It must therefore be determined whether the non-English language trade mark conveys a meaning to those who will be concerned with (being those involved in the purchase, consumption and trade of) the relevant goods or services. This will then inform the question of whether or not the trade mark is one which is likely to be needed by other traders. An example of this can be found in Maxam Food Products Pty Ltd, Re [1991] ATMO 12, where the words “La Deliziosa”, Italian for “the delicious one”, were refused on the basis that their meaning would be transparent to the general public, and recognised as a laudatory expression in relation to foodstuff goods by large numbers of ordinary Australians.

If however the non-English word does not convey a meaning to those who will be concerned with the relevant goods or services, then the trade mark is likely to be inherently adapted to distinguish. In a United Kingdom case Burgoyne's Trade Mark (1889) 6 RPC 227, the word OOMOO was held to designate "choice" in an Australian Aboriginal language. Nevertheless Chitty J was of the opinion that the trade mark signified nothing to the ordinary English person. In Kiku Trade Mark [1978] FSR 246, KIKU, the Japanese word for chrysanthemum, was found to be registrable in Ireland for perfumes and cosmetic preparations, under provisions similar to the Australian provisions. This was because the ordinary person in Ireland in 1978 would need to have the word translated from Japanese in order to know its meaning. These cases support the reasoning in relation to the relevant markets at the time however the Australian market and population may differ.

11.1 Trade marks in non-Latin characters or letters

Consideration of trade marks containing non-Latin characters or letters needs to take into account the typical person concerned with the goods or services. A ground for rejecting an application may exist where the trade mark applied for is rendered in non-Latin characters and the typical person concerned with the goods or services is likely to understand and/or apply a relevant meaning it, whereby the ordinary signification to them is something which is likely to be needed by others. Examples where this might occur include: newspapers targeted at specific portions of the community or translation services. In such situations, it is important to ascertain the meaning of the characters, including and considering translations provided by the applicant. The nature of the goods and/or services and whether other traders are commonly using or are likely to need to use the non-Latin characters or letters in connection with the particular goods or services should also be considered.




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11.2 Combinations of multiple languages

When a word/s which lacks inherent adaption to distinguish is combined with word/s in another language which have the same or similar meaning the resultant combination may also lack inherent adaptation to distinguish the applicant’s goods or services, especially in trades where it is common to include indications regarding characteristics of the goods/services in multiple languages – for example:

Trade mark Goods and or services

Section 41

Size

Taille

Talla

Boys' clothing; children's clothing; clothing; girl's clothing

Section 41 ground for rejection appropriate. Taille is French for size. Talla is Spanish for size. Both languages are well known in Australia. In relation to the goods, Australian consumers are likely to see this as three references to the size of the goods and not a badge of origin as it is common for traders to present information, such as size, in different languages.

Hair lotions; shampoo

Section 41 ground for rejection appropriate. The non-Latin characters appearing in the trade mark are Chinese for shampoo. In relation to the goods many Australian consumers are likely to see this as two descriptions of the goods and not a badge of origin.




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Translation services

Section 41 grounds for rejection appropriate. These characters/words represent ‘translation services’ in Japanese, Chinese (simplified), Chinese (traditional), Arabic, French and Spanish respectively. In the context of the services under offer, it is likely that the ordinary significance of the mark would be seen as indicating translation service to the typical person concerned with such services.

Trade marks comprised of more than one language, except when the word/s or character/s have the same or similar meaning, will generally be prima facie capable of distinguishing. A trade mark's inherent adaptation to distinguish increases when it contains a combination of different languages, as the likelihood of other traders already using or desiring to use that particular combination without improper motive is more unlikely.

12. Slogans, phrases and multiple words



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12. Slogans, phrases and multiple words

A trade mark may be composed of a number of words. Trade marks composed of more than one word include phrases, mottos, maxims, epigrams, proverbs, and adages. Multi-word trade marks of this type may be categorised as slogans. They are commonly used in the course of trade and advertising to promote a cause, an idea or a product.

When deciding whether a multi-word trade mark is capable of distinguishing the applicant's designated goods or services, the same inquiries are made as for a single word. The question of whether or not a trade mark is capable of distinguishing will in either case ‘largely depend upon whether other traders are likely, in the ordinary course of their businesses and without any improper motive, to desire to use the same mark, or some mark nearly resembling it’ (W & G Du Cros Ltd's Appn (1913) 30 R.P.C. 660 at 672).

A trader may adopt a well-known slogan, modify a well-known slogan, or invent a new slogan. As in the case of single words, evidence, get-up and/or any other circumstances may establish that a trade mark is capable of distinguishing the applicant's goods or services where this cannot be decided otherwise.

Case Law for consideration in relation to slogans includes Comfort Shirt Co Pty Ltd's Appn (No 4) (1961) 31 AOJP 1169 (Irons itself automatically in the wash); Johnson & Johnson Pty Limited's Appn (1962) 32 AOJP 1214 (Best for baby best for you); Chin Chin Trade Mark [1965] RPC 136 (Chin Chin); Re Appn by Tandy Corp (1984) 3 IPR 221 (Worldwide supermarket of sound).

13. Common formats for trade marks



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Some words are commonly used in combination to identify the nature or extol the virtues of a particular product or service. These include:

13.1 Mr, Mrs, Miss etc. trade marks

The inclusion of Mister, Mr, Mrs, Miss, Ms in a trade mark will not generally give rise to a section 41 ground for rejection. However, there are some circumstances in which a ground for rejection may be appropriate:

• Where the trade mark consists of the word Mr, Mister, Mrs etc. followed by a common surname e.g. MR SMITH, MRS BROWN. Such trade marks should be examined on the basis of the criteria for registration of surnames. The commonness of the surname is only one of the factors that should be considered. (see paragraph 16 of this Part which refers to examination practice in relation to common surnames).

• Where research clearly supports a ground for rejection. Examples may include MR AUSTRALIA for bodybuilding competitions and MISS BEAUTIFUL for beauty contests.

13.2 Dr trade marks

The inclusion of Dr or Doctor in a trade mark will not generally give rise to a section 41 ground for rejection. However, there may be some circumstances in which a ground for rejection may be appropriate:

• Where the trade mark consists of the word Dr or Doctor followed by a common surname. Such trade marks should be examined on the basis of the criteria for registration of surnames. The commonness of the surname is only one of the factors that should be considered. For example, a section 41 ground for rejection is likely to apply to DR NGUYEN for education services (see paragraph 16 of this Part which refers to office practice in relation to common surnames).

• Where the term Dr or Doctor is combined with another word and research clearly supports a section 41 ground for rejection. For example EYE DOCTOR for medical services.

13.3 My trade marks

"My" trade marks consist of the word “My” followed by a descriptive word/s associated with the applicant’s goods or services (e.g. MY PLUMBER for plumbing services and MY FLORIST for florist services).




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Where research shows that the combination of the word “My” and word/s describing the goods or services (or some attribute of the goods or services) is a commonly used and understood expression, section 41 grounds for rejection should be raised. If research does not indicate this, section 41 grounds for rejection should not be raised.

When considering whether a phrase containing the word “MY” is capable of distinguishing (see table below), consideration must be given to the ordinary signification of the phrase. Whether or not the trade mark is capable of distinguishing, will depend upon if the phrase is something ‘other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same phrase, or some phrase so nearly resembling it’. Trade marks containing the word “MY” that form an expression that is not considered capable of distinguishing will require evidence of use to achieve acceptance under the provisions of section 41 of the Act. See examples in table below:

Trade mark Goods and/or services

Section 41

PAY MY DEBT Class 36: Financial services

Yes, indicates to the consumer that the trader’s financial services allow the consumer to pay their debt.

FIX MY COMPUTER

Class 37: Maintenance and repair services

Yes, indicates to the consumer that the trader provides maintenance and repair services that fix the consumer’s computer.

MY FLORIST, MY CHOICE

Class 44: Floristry services

No, the expression does not indicate the nature of the services being provided.

MY DAY, MY WAY

Class 44: Arranging of wedding services

No, the expression does not indicate the nature of the services being provided.

13.4 Ultra trade marks

"Ultra" is an ordinary term currently used as a superlative, denoting anything which is claimed to be ultimate in its field. The word "ultra" on its own or in combination with an adjective or common suffix which describes a character or quality of the goods or services has limited inherent adaptation to distinguish. Examples where a ground for rejection is warranted include ULTRA CREAMY for milk and ULTRA FAST for delivery services.

The word "ultra" followed by the name of the goods is considered to have a small amount of inherent adaptation to distinguish and therefore would require evidence that the trade mark does or will distinguish, or of any other circumstances, in order to be accepted. Examples are ULTRA SHIRT and ULTRA PAPER (see Re Appn by John May Pty Ltd (1968) 38 AOJP




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3440 (Ultracide); Re Spring Industries Inc's Appn (1991) 23 IPR 188 (Ultra suede); Re Courtauld Textiles' Appn (1994) 30 IPR 624 (Ultrabra)).

13.5 World and land trade marks

Trade marks consisting of WORLD, WORLD OF, LAND, LAND OF in combination with the name of, a direct reference to, or an attribute of, the designated goods or services will generally be considered prima facie capable of distinguishing.

However WORLD or LAND trade marks which form an expression commonly used to define a particular field of interest or activity will usually possess insufficient capacity to distinguish goods or services in that field. Such trade marks will usually need evidence of use to achieve acceptance.

Trade mark Goods and/or services Section 41

CHEESEWORLD Class 29: Dairy products, including cheese

Class 35: Retailing of cheeses and, dairy products

No – the trade mark is the combination of WORLD and CHEESE which is a direct reference to the goods / services.

LAND OF SHOES Class 25: Footwear

Class 35: Retailing of footwear

No – the trade mark is the combination of LAND and SHOES which is a direct reference to the goods / services.

THEATRICAL WORLD

Class 41: Entertainment services

Yes – the expression is commonly used in relation to the field of dramatic arts and should legitimately be open for use by others.

WORLD OF BIG BUSINESS

Class 36: Financial services Yes – the expression is commonly used in relation to business, commerce and finance and should legitimately be open for use by others.

13.6 Trade marks that contain a unit of time




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Trade marks containing a unit of time such as DAY, WEEK or MONTH in combination with a word or expression that defines, describes or indicates a particular field of interest or activity may lack the inherent adaptation to distinguish particular goods and or services.

For example:


Australian Art Day Class 41: Entertainment services including arrangement of exhibitions and events.

Yes - ground for rejection likely to be appropriate as the phrase indicates entertainment services including events relating to/ enjoying/viewing Australian art.

Sick Kids Day Class 14: Charity wrist bands; decorative pins

Class 26: Decorative ribbons

Class 28: Board Games

Class 36: Charitable fundraising

Class 41: Organisation of entertainment events for children.

Yes - ground for rejection likely to be appropriate as the services are indicative of the type and target audience of charitable fundraising in class 36 and entertainment in class 41. The goods claimed in classes 14, 26 are goods that are commonly associated with such events and are therefore also likely to attract a section 41 ground for rejection.

Beautiful Smiles Day

Class 16: Printed matter and publications relating to dental care and health care

Class 41: Education and entertainment services relating to dental care and health care.

No - ground for rejection not likely to be appropriate as the goods and services in classes 16 and 41 do not provide you with or enable you to have a beautiful smile.

European Fashion Week

Class 41: Fashion shows; production of fashion shows (entertainment).

Yes - ground for rejection likely to be appropriate as the entertainment services in class 41 relate to a week long event which features or showcases European fashion.

Melancholic Depression Week

Class 16: Printed matter relating to health education.

Class 41: Education and

Yes - ground for rejection likely to be appropriate as all goods/services claimed in




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training in relation to mental health.

Class 44: Providing information in relation to mental health.

classes 16, 41 and 44 relate to a week long event which focuses on promotion/awareness of mental illness, specifically melancholic depression.

Reach Out Week Class 36: Charitable fundraising in relation to making contact with old friends/lost family.

No - ground for rejection not likely to be appropriate as while it may allude to the purpose of the services, the phrase does not have a descriptive meaning in relation to the charitable services.

14. New terminology and "fashionable" words



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Language and its usage are constantly changing. There are many words used today which were not in vogue or did not even exist five years ago, or which have changed their meaning with the passage of time. Examiners should take this into account when assessing the registrability of trade marks and should try to be aware of emerging trends in the use of language.

For example, market interest in environmental issues has been characterised by use of words such as "Green" and "Ozone", and abbreviations such as "Enviro" and "Eco". These words on their own are the sort traders are likely to need to use and have no inherent adaptation to distinguish when used in relation to environmentally friendly goods or services. However, if combined with other words to form a combination that cannot be shown to be demonstrably needed by others, they will often be capable of distinguishing. In assessing whether a proposed combination is demonstrably needed by other traders, examiners should have regard to current usage in the relevant trade. Internet searches may be used to assess current usage.

The popularity of new words or phrases is not restricted to the environment. Many areas including modern technology, the Internet, and fashion develop new language and new uses of existing language which quickly become generic.

14.1 E trade marks

With the increasing use and importance of electronic forms of communication, in particular the Internet, to conduct business and advertise goods and services, it has become increasingly commonplace for traders to adopt trade marks featuring the prefix "e". The prefix is commonly understood to mean electronic and it is often used, in combination with a word or phrase, to indicate goods which incorporate electronics or electronic technology or services provided by electronic means, that is, online or via the Internet. As such, a trade mark consisting only of the prefix "e" and a word or phrase which has a direct reference to the goods or services claimed will be considered to have little or no inherent adaptation to distinguish.

Examiners will need to consider if the material in the trade mark, apart from the prefix "e", has any inherent adaptation to distinguish. The presence of the prefix "e" in a trade mark is unlikely to add to the trade mark's capacity to distinguish unless it is rendered in a very distinctive way.

For example, a ground for rejection would be raised against e-TOYS in respect of a broad claim for class 28 goods as it would be considered to have a reference to electronic toys. Similarly, it would have direct reference if the specified services were the retailing of toys.

Trade marks such as e-COMMERCE for business services and e-PRINT for printing services are not prima facie capable of distinguishing.




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However, if a trade mark consists of the prefix "e", and a word having no direct reference to the specified goods or services (such as e-magic for non-magic related goods/services), or if the reference is allusory (such as e-wonder), then the trade mark will be prima facie capable of distinguishing.

14.2 Domain names

A domain name is the address which is entered into a web browser’s address field to locate resources on the Internet. It is typically a combination of standard address code material and an identifier.

Standard address code material points to directories, sub-directories and servers and is common to many domain names. Examples of standard address code material are: "http://", "www.", "net", "org", "com", "shop" or "au" and punctuation symbols "~", "." or "/".

An identifier may be an individual's name, an existing trade mark, a company name, a product name, a topic or any other combination of letters and numerals and is unique within any given domain name registration system.

In a domain name, it is the identifier which enables one domain name to be differentiated from another, and may lend a domain name some trade mark significance. In other words, it is the identifier which is the distinguishing element of a domain name, and this is the element which should be considered when assessing the inherent adaptation to distinguish.

Where a trade mark consists only of standard address code material and an identifier it will not be prima facie capable of distinguishing if the identifier is a word, phrase or combination of letters and/or numbers which other traders would wish to use in the normal course of their trade. An example of when a ground for rejection should be raised is the domain name WWW.SYDNEY.COM. Sydney is a well-known geographical location and should be available for other traders to use to indicate the origin of their goods and/or services. Similarly trade marks such as SMITH.COM or BESTPRICE.COM should attract a ground for rejection as Smith is a common surname and best price is a laudatory expression.

If a domain name is part of a composite trade mark, the trade mark may be prima facie capable of distinguishing due to the overall presentation, depending on the relative proportions, arrangement etc. of the material within the trade mark as a whole. For more information about composite trade marks see paragraph 26 of this Part.

Where a section 41 ground for rejection has been raised, the fact that the applicant is the registrant or authorised user of the domain name is not sufficient on its own to overcome the ground for rejection. However, if the applicant has been using the domain name for a sufficient period of time and it has developed the secondary meaning of indicating trade origin, this may support applying the evidence provisions of section 41. When assessing evidence in relation to domain names examiners should be mindful that use does not always equal distinctiveness.




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A section 43 ground for rejection will apply if the applicant for a trade mark containing material likely to be viewed as a domain name is not also the registrant (or authorised user) of that domain name. For more information in relation to domain names and section 43 see:

• Part 29 Trade Marks Likely to Deceive or Cause Confusion - 4.4 Marks suggesting endorsement, licence or approval

14.3 Smart and Intelligent trade marks

The ordinary dictionary meanings of the words "smart" or “intelligent” should be taken into account when examining trade marks incorporating them, as should the surname significance of Smart. However, the words are now ones which many traders wish to use, particularly in relation to goods which utilise, or are a product of, modern technology. In relation to these goods the words are understood to mean that the goods have one or more of the following features in some form or degree:

• incorporate artificial intelligence

• are computerised or utilise processors or other mechanisms of control

• are programmable

• have automated functions

• are capable of processing information.

If the designated goods incorporate any of the features mentioned above, and the trade mark consists only of the word SMART or INTELLIGENT, then a ground for rejection should be raised.

If a trade mark consists of the word SMART or INTELLIGENT combined with a word having some reference to the goods or services, then it is unlikely to be sufficiently inherently adapted to distinguish. For example SMART LIGHTS would not be prima facie capable of distinguishing on lighting apparatus or the installation of lighting apparatus and therefore a section 41 ground for rejection would be appropriate.

Trade marks consisting of the combination of a word that has some reference to the goods or services, followed by the word SMART or INTELLIGENT, will usually be prima facie capable of distinguishing. For example LIGHT SMART would be inherently adapted to distinguish lighting apparatus or the installation of lighting apparatus and therefore a section 41 ground for rejection would not be appropriate.

14.4 Phonewords

Phonewords (or SMS words) include 1300, 1800, 13 and 197 phone numbers that are presented alphabetically using the letters of a telephone or mobile key pad (e.g. 1300 GROCER, 1800 RABBIT and 13 BAGS).




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A section 41 ground for rejection will apply in relation to trade marks that simply consist of 13/1300/1800/197 and other descriptive or non distinctive elements (in the same way that those elements on their own would attract a ground for rejection). The ground for rejection applies irrespective of whether the trade mark is a valid phoneword. See 1300 Australia Pty Ltd v 1800 Blinds Pty Ltd [2008] ATMO 57.

Examiners will need to consider if the material in the trade mark, apart from the 13/1300/1800/197 element, has any inherent adaptation to distinguish. For example, 1800 RABBIT is not considered to any extent inherently adapted to distinguish the sale of pet rabbits and a section 41 ground for rejection would be appropriate.

Phonewords appearing in a composite trade mark containing additional distinctive elements will usually have sufficient inherent adaptation to distinguish and not attract a section 41 ground for rejection. For example:

This composite trade mark is considered to be prima facie capable of distinguishing in relation to the sale of pet rabbits.

Where a section 41 ground for rejection has been raised, the fact that the applicant is the owner or authorised user of the phoneword is not sufficient on its own to overcome the ground for rejection. However, if the applicant has been using the phoneword for a sufficient period of time and it has developed the secondary meaning of indicating trade origin, this may support applying the evidence provisions of section 41. When assessing evidence in relation to phonewords examiners should be mindful that use does not always equal distinctiveness.

A section 43 ground for rejection will apply if the applicant for a trade mark containing material likely to be viewed as a phoneword is not also the owner (or authorised user) of that phoneword. For more information in relation to phonewords and section 43 see:

• Part 29 Trade Marks likely to Deceive or Cause Confusion - 4.4 Marks suggesting endorsement, licence or approval

14.5 Hashtags

A hashtag is an identifier which is added to a social media post or message (such as a tweet) which connects it to a common theme. It typically starts with the # symbol and follows with a word or string of words (with no spaces) that link it to the common theme.




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The word/s after the hash symbol may be just about anything. They may be invented words, they may refer to an individual's name, an existing trade mark, a company name, a product name, an event or place, an occupation, a hobby, and so on. The very nature of a hash tag is often descriptive as it helps link posts with a common theme.

In a similar way to domain names, it is the words following the # which are the distinguishing element of a hashtag, and this is the element which should be considered when assessing the inherent adaptation to distinguish.

Where the trade mark consists of a # followed by descriptive or non-distinctive elements it will not be prima facie capable of distinguishing. An example of when a ground for rejection should be raised is #SYDNEY as Sydney is a well-known geographic location and should be available for other traders to use to indicate the origin of their goods and/or services. Other examples that would attract a ground would be #PLAYNETBALL for sporting services or #FINDADATE for dating services.

If a hashtag is part of a composite trade mark, the trade mark may be prima facie capable of distinguishing due to the overall presentation, depending on the relative proportions, arrangement etc. of the material within the trade mark as a whole. For more information about composite trade marks see paragraph 26 of this Part.

If the applicant has been using the hashtag for a sufficient period of time and it has developed the secondary meaning of indicating trade origin, this may support applying the evidence provisions of section 41. When assessing evidence in relation to hashtags, examiners should be mindful that use does not always equal distinctiveness.

14.6 Cryptocurrency

Cryptocurrency is a digital currency in which encryption techniques are used to regulate the generation of units of currency and verify the transfer of funds, often operating independently of a central bank. Many organisations are now creating cryptocurrencies as alternatives for traditional money or payment systems and these cryptocurrencies can now commonly be used to pay for a variety of goods/services.

Generally, the name of a cryptocurrency will be inherently capable of distinguishing unless research demonstrates that the term:

• is used to describe an aspect of the cryptocurrency (e.g. altcoin - a type of cryptocurrency viewed as an alternative to BitCoin. It is likely that other traders would desire to use the term without improper motive in relation to the services), or

• is the name of an underlying technology used in cryptocurrencies (e.g. blockchain).

Particular care should be taken when doing s41 research for any marks that have claimed goods in:

• Class 9 (Cryptocurrency exchange software, Cryptocurrency wallets, Cryptographic apparatus are all picklisted items)




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• Class 36 (Cryptocurrency investment consultancy)

Class 42 (Cryptocurrency engineering, Cryptocurrency mining, Cryptographic engineering, Data cryptology services, Digital signature verification services (electronic cryptology services), Electronic signature verification services (electronic cryptology services).

Considering that the distinctiveness of a trade mark is assessed at the time of filing is essential to determining whether a trade mark is inherently adapted to distinguish in relation to cryptocurrency.

15. Geographical names



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15. Geographical names The geographical origin of goods or services is referred to in Note 1(a) included in section 41. Geographical references have little to no inherent adaptation to distinguish. Traders will generally not be able to obtain a monopoly on the name of a place or region unless evidence of use is received. Any evidence of use that is received will generally have to show that, because of the extent to which the trade mark has been used, it does distinguish the applicant’s goods or services from those of other traders. In practice, however, it would be very difficult to provide evidence that such a trade mark does distinguish, particularly where the trade mark is for the name of larger, more significant cities, towns and rural areas.

When assessing the registrability of geographical names, consideration should be given to both the current and potential ordinary signification of the geographic name. If it is reasonable to suppose that the designated goods/services may originate from the geographical location in the future, consideration should be given to the fact that future traders may have a legitimate desire to use the name of the location (Mantra IP Pty Ltd [2017] ATMO 10 (BALÉ)).

15.1 Geographical names which have no inherent adaptation to distinguish

Words which function solely as geographical names, and which have some obvious or potential connection with the goods or services, have no inherent adaptation to distinguish.

The potential of geographical names to have a connection with goods or services is an important consideration. As Gummow J stated at 503 in the Oxford case when refusing registration of the word, OXFORD, under the 1955 Act on the basis that Oxford was not inherently adapted to distinguish the applicant's books from those of other book publishers whose goods also emanated from Oxford:

The point is if goods of the kind in question are produced at the particular place or in the area, or if it is reasonable to suppose that such goods in the future will be produced there, other traders have a legitimate interest in using the geographical name to identify their goods, and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration.

It is not necessary to establish that a place has a reputation for producing the designated goods/services in order to raise a ground for rejection under s 41 of the Act. It is sufficient that the goods/services have a potential connection with the geographical name.

If there is no reasonable prospect of the goods/services originating from the geographical location, now or in the future, then the geographical name may have some inherent adaptation to distinguish. This will generally apply to locations where it would be unviable in terms of cost and practicality to trade from the location in question:

MONTE ROSA No ground for Monte Rosa is the highest peak in Switzerland and is




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Class 34: Cigarettes

rejection covered in snow and glaciers year-round. There is no real possibility of cigarettes being manufactured or originating from the mountain.

MAATSUYKER

Class 29: Seafood

S41(3) ground for rejection appropriate

The Maatsuyker Islands are remote islands south of Tasmania. Maatsuyker Island is 1.86 km2. Although the island is small, there is still a potential connection with the geographical reference as the designated goods could be sourced from the waters surrounding the island.

MAATSUYKER

Class 25: Clothing

No ground for rejection

The size and isolation of the island make it unlikely that clothing will ever be produced or sold from Maatsuyker Island. There is no real or potential connection to the goods.

NABIAC

Class 15: Musical instruments

S41(3) ground for rejection appropriate

Nabiac is a small town on the NSW mid-north coast. It has no reputation for producing musical instruments, however it is reasonable to suppose that the goods may be produced there in future. In this instance there is a potential connection to the geographic location. NABIAC has no inherent adaptation to distinguish the designated goods.

For guidance, see Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511 (’Michigan’); Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 (‘Oregon’); Thomson v B. Seppelt (1925) 37 CLR 305 (’Great Western'); Harbin Brewing Co., Ltd [2012] ATMO 48 (11 May 2012) (‘Harbin’); Marriott Worldwide Corporation [2016] ATMO 1 (‘Fairfield’); Mantra IP Pty Ltd [2017] ATMO 10 (‘Bale’)

15.2 Names of foreign towns, localities and other geographic references




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Names of foreign towns or localities are to be considered on the basis of their connection or potential connection to the designated goods or services.

The Colorado decision, Colorado Group Limited v Strandbags Group Pty Limited (2007) FCAFC 184 discusses the connection between a foreign geographical reference, the US state of Colorado and goods that include amongst other things bags and backpacks, wallets, clothing and footwear. At 128:

I have difficulty in accepting that the word "Colorado" is inherently adapted to distinguish backpacks, or even bags, wallets and purses. It is not a fancy or made up word. It is the use of a name being a State of the United States of America which has well-known mountains and is a rugged holiday area. In my view, the honest trader could well wish to make use of the signification of the word for geographic reasons – especially in relation to backpacks, or to raise a connotation from the geographic attributes of that State.

Other words may suggest a geographic relationship and this should be given appropriate consideration at examination. For instance the word KIWI is defined by the Macquarie Dictionary as of or relating to New Zealand and therefore a ground for rejection may be appropriate where KIWI is a dominant part of the trade mark.

Applications for services

In the case of applications for service trade marks such as SALZBURG DRYCLEANERS or SHAFTESBURY CAR WASH where provision of the service from outside Australia is improbable, a ground for rejecting the application under s 41 is unlikely. An obvious exception to this would be travel or tourism services.

Where the trade mark consists of the name of an overseas geographical reference claiming services, consideration should be given to:

• Whether the services are of the kind that are provided to Australian consumers/traders/purchasers from overseas, and

• Whether the services have some obvious or potential connection with the geographical location

Applications for goods

Registration for goods will be difficult to attain if the items are regularly imported from overseas, marketed on the basis of a foreign style or have some other obvious or potential connection to the geographical location.

The following factors will help to determine whether there is a potential connection to a foreign location:

• Size/population of the geographical area in question




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For example, the name of a geographic location with a population in the millions will be unlikely to have any inherent adaptation to distinguish, regardless of the goods claimed. Alternatively, a sparsely populated location where it is unlikely the goods will be provided from or to, may have limited capacity to distinguish, or when all factors are considered, may not warrant a ground for rejection.

• Reputation

A geographic location which has a reputation for producing particular goods, regardless of population or size, will likely have no inherent adaptation to distinguish those goods

• The nature of the goods - whether they are regularly imported for sale in Australia, and whether they are easy or difficult to produce

• Existing industry/manufacturing capability/ likelihood of future development

Geographic locations which have existing manufacturing capabilities, either for the goods in question or for goods of a similar nature, are more likely to have a potential connection to the goods. Conversely, names of locations which have little to no economic activity and have no reputational connection with the goods may be inherently adapted to distinguish.

Endonyms

Geographical references which are expressed in the language of the place itself should be considered on the basis of their ordinary signification to Australian consumers, purchasers or traders. Consideration should be given to whether other persons are likely to desire to use the word for the sake of its geographic meaning in connection with their own goods or services. For example, the ordinary signification of Deutschland would be understood by most Australians as the German word for ‘Germany’. It is highly likely that other persons would wish to use the word for the sake of its ordinary signification. On the other hand, Foroyar is unlikely to ordinarily signify to Australians a connection to the Faroe Islands, and as such it may have some inherent adaptation to distinguish.

15.3 Geographical names with multiple meanings

Geographical names which have multiple meanings must be considered on the basis of their ordinary signification. Consideration should be given to whether the primary signification of the words comprising the trade mark to anyone in Australia purchasing, consuming or trading in the relevant goods/services is that of a geographical reference. Geographical names with more than one meaning may have some inherent adaptation to distinguish if there is some ambiguity as to whether or not other traders would desire to use the trade mark for its geographic meaning.

BOWEN S41(3) GFR appropriate

Bowen is both a town in Queensland AND a common surname. The trade




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CONSULTANCY

Class 35: Business advice and consultancy services

mark has no inherent adaptation to distinguish. (Tchen Kil Tchun [2014] ATMO 28 ‘Lancaster’)

PUNCHBOWL ELECTRICAL

Class 37: Electrical appliance installation and repair

S41(3) GFR appropriate

Punchbowl is defined as a bowl in which punch is mixed and served, however when viewed in context of the services claimed and the additional material in the trade mark, it is likely to be seen as a geographic reference. The mark has no inherent adaptation to distinguish.

GANJA TIME

Class 14: Wrist watches; Clocks; Horological instruments

No S41 Ganja is a city in Azerbaijan, however the word is likely to be seen as a colloquial term for marijuana rather than a geographical reference.

15.4 Superseded geographical names

Superseded geographical names that have no connection with the goods such as BYBLOS (class 25) which is the ancient name for the Lebanese town of Jubayl are likely to be prima facie capable of distinguishing.

Geographical names which have been officially superseded recently but are still in popular usage have a degree of inherent adaptation to distinguish but may not be prima facie capable of distinguishing. These could include names such as PEKING, CEYLON and LENINGRAD where the original geographical meaning is still very much the primary signification of the name and is still being used interchangeably with the new name.

The Persian Fetta decision, Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (2010) FCA 1367 provides relevant guidance when considering this issue. At 211:

Persia is not a made up or fictitious country that did not ever exist, and is a name which does relate to a region of the world which can be identified. The name “Persia” has been officially superseded only within the last century, and there is general usage of the name. Just like names such as “Peking” and “Ceylon”, the original geographical meaning is still the main signification of the name. Even if not necessarily being used interchangeably with the new name of the country Iran, the name Persia still is a reference to a specific part of the world in the Middle East. The use of the word




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“Persian” in the trade mark PERSIAN FETTA does not save the word “Persian” from carrying is prima facie geographical signification.

And at 212:

“Persian” in reference to cheese is not a fanciful or arbitrary geographical reference like the North Pole is for bananas. The evidence indicates that there is a degree of association with cheese and the former region known as Persia to conclude that an honest trader would legitimately want to use the term “Persian” to describe fetta cheese. PERSIAN FETTA (as a composite term) is certainly not a made up term or device unrelated to cheese, or unrelated to a geographical region of the world associated with cheese production of a specific type or style.

Some ancient place names which are no longer population centres presently have tourist significance and therefore could attract a ground for rejection, depending on the goods/services claimed.

15.5 Company towns

Some towns have come to prominence purely because a particular company has established itself there and has been responsible for its growth and subsequent reputation. If evidence demonstrates that the town’s reputation originates from its business, acceptance for registration may be possible.

15.6 Phonetic similarity to a geographical name

A ground for rejecting an application will generally not exist on the basis of phonetic similarity to existing geographical names. Well known place names have well known spellings and variations on these spellings can render the word inherently adapted to distinguish.

However, minor misspellings which are phonetically the same and visually very similar to well known place names may not be considered inherently adapted to distinguish.

For example:


MELBORNE Class 25: Clothing Yes – ground for rejection likely to be appropriate. MELBORNE is a minor misspelling of Melbourne. The trade mark is phonetically identical and visually very similar to Melbourne.

MULLBORN Class 25: Clothing No – ground for rejection not likely to be appropriate. MULLBORN is not a geographical name. It is not a phonetic




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equivalent or obvious misspelling of Melbourne

15.7 Names of streets, roads, districts and suburbs

These are to be treated like any other geographical name. The test is whether because of the ordinary signification of the trade mark containing or consisting of the geographic reference, other traders are likely to think of the name and desire to use it in connection with their own goods and/or services. Relevant considerations include:

• whether there are other businesses or a commercial area existing in the street, road, district or suburb;

• whether the goods or services are of the kind likely to be provided by other traders in that street, road, district or suburb (for example ordinary consumer goods may be provided by other traders in most areas, whereas highly specialised goods or those requiring significant infrastructure may be less so);

• whether the name is one found in many cities and at least one occurrence is likely to include a business or commercial area (for example “The Esplanade”, “Southbank” or “Victoria Street” are found in many cities and often contain entertainment, retail or business centres); and

• whether the street, road, suburb or district has a potential connection with certain goods or services (for example LYGON STREET has a reputation as a restaurant district and so does not have sufficient inherent capacity to distinguish in respect of restaurant services).

Research will generally give a sufficient indication of the nature of the street, road, district or suburb. Where the name in question is that of a district or suburb consideration must be given to the fact that such areas often incorporate both commercial and residential areas.

15.8 Names of rivers, seas, deserts, mountains etc.

Names of rivers, seas, deserts, mountains and the like will be considered to be prima facie capable of distinguishing goods or services not associated with these geographical features. For example:

• YARRA RIVER or BASS STRAIT would not be prima facie capable of distinguishing fish but could be for musical instruments or compact discs.

• CLARE VALLEY (a wine growing district in South Australia) would not be prima facie capable of distinguishing grapes.

• HAMERSLEY (a mountain range in Western Australia and source of iron ore) would not be prima facie capable of distinguishing mining services.




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Well known names such as SAHARA, ATLANTIC or NORTH POLE could be capable of distinguishing a variety of products if no obvious or potential connection to the designated goods or services exists in relation to the area.

15.9 Names of private buildings

The name of a private building is not analogous to the name of a town, suburb, district or region and may be inherently adapted to distinguish.

For example:

• In MID Sydney Pty Ltd v Australian Tourism Co Ltd (1998) 90 FCR 236 (‘MID Sydney’) the large privately owned city office building named Chifley Tower was not considered a geographical location.

• In Mantra Group Pty Ltd v Tailly Pty Ltd (No 2) (2010) 183 FCR 450 (‘Tailly’) the large privately owned residential apartment building known as Circle on Cavill was not considered to be a geographical location.

• In Mantra IP Pty Ltd v Spagnuolo [2012] FCA 769 (‘Q1’) the name of a privately owned apartment building (Q1) was found to be inherently adapted to distinguish a variety of services including letting services (class 36), travel and tourist services (class 39) and hotel and accommodation services (class 43).

In Q1 Reeves J at 59 summarises the approach as follows:

the name of a privately owned building cannot be regarded as being the equivalent of a geographical place name such that it is considered as part of the common heritage over which the public, including a competitor trading in, or near, the building can claim to have a public right to make honest use of that sign in relation to its goods or services.

15.10 Derivatives of geographical names

If a geographical name is not prima facie capable of distinguishing, a known derivative of the geographical name will likewise not be inherently adapted to distinguish.

For example OZ is a well known reference to Australia. Trade marks consisting only of the word OZ, or OZ in combination with a word or expression with a direct reference to the goods or services being claimed, are unlikely to be inherently adapted to distinguish.

15.11 Geographical names combined with a device

The addition of an ordinary depiction of the goods claimed, or a conventional depiction of a map or national symbol, to a geographical name which is not inherently adapted to distinguish, is unlikely to render the trade mark (as a whole) capable of distinguishing.




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For example:

Trade mark Goods and/or services

Class 12: Yachts

Class 39: Towing; Towing of vehicles; Towing of vessels; Vehicle breakdown assistance (towing); Vehicle towing; Vessel towing services

OZ YACHTS is a combination of: the words OZ (a well known reference to Australia) and YACHTS (which is directly descriptive of the goods claimed); and a pictorial representation of a map of Australia.

The second trade mark is a depiction of the state of New South Wales and the words Northern Rivers Towing Service. This simply reinforces that Northern Rivers is a geographical reference to a region in New South Wales.

When taken as a whole, other traders are likely, in the ordinary course of their business and without any improper motive, to desire to use the same trade mark or trade marks so nearly resembling it, upon or in connection with their own goods or services. The trade marks have some inherent adaptation to distinguish but they are not prima facie capable of distinguishing. In this instance a section 41 ground for rejection is appropriate.

However each trade mark must be considered on its own merits. Highly stylised or unusual representations may be sufficient to render the trade mark as a whole capable of distinguishing. For more information in relation to composite trade marks see paragraph 26 of this Part.

16. Surnames



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16. Surnames

When deciding whether a trade mark consisting of a surname is capable of distinguishing the designated goods and / or services of an applicant from those of other traders, it is necessary to first consider the extent to which the trade mark is inherently adapted to distinguish those goods and / or services. The commonness of a surname is an indicator of the extent to which the trade mark is inherently adapted to distinguish the applicant's goods and / or services.

16.1 Searching For Australian Surnames

The Research Facility for Trade Marks offers search results for a word which is also an understood surname within Australia (see Australian Surnames field). If the word is an understood Australian surname, this field will indicate how common it may be considered (in number value). Most surnames shared by a significant portion of the Australian population are likely to be found in the search results and no search is made of foreign directories.

This search result should be taken into account when considering the likelihood that a trader with that name would wish to use the name in connection with his or her goods and / or services. The more common the surname, the less inherent adaptation to distinguish it will have. The consideration as to whether a trade mark containing or consisting of a surname is inherently capable of distinguishing is multifaceted however and how common it may be in number value is only one of the factors that should be considered. Other factors include:

• The nature of the goods and / or services must be taken into account, that is whether they are specialised, commonplace or somewhere between these extremes. For example, if the surname is common, but the goods are cyclotrons or railway coaches, the likelihood that other persons will need to use the name on those goods is low enough for the trade mark to be considered prima facie capable of distinguishing. On the other hand, if the trade mark is to be applied to more commonplace goods such as clothing or cakes, there is a much greater likelihood that another person would wish to use the same surname on their similar goods and a ground for rejection would be appropriate.

• If the surname in the trade mark also has other meanings and associations, these should be considered taking into account their relevance to the application at hand and the level of understanding that consumers and general public may have. For example, GREEN is a surname shared by a significant number of Australians and also has well known relevance to and associations with energy efficiency.

• Are the goods and / or services claimed easily produced and readily available? Is the market for the goods and/ or services highly regulated or strictly licensed? For example, pharmaceutical goods are highly regulated and depending on what the

16. Surnames



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pharmaceutical is, it may not be easily produced and / or readily available due to its ingredients and purpose.

• Is it common practice in Australia for traders of the particular goods and / or services claimed to use their surname as a trade mark? For example, it is common in Australia for legal practices to adopt and utilise surnames as part of business names and trade marks.

There are Court and Hearings decisions to assist with determining whether a surname is inherently capable of distinguishing the goods and / or services claimed. Please see:

• Companhia Souza Cruz Industria E Comercio v Rothmans of Pall Mall (Australia) Ltd (1998) FCA 689; 41 IPR 497.

• Garrett Electronics Inc (2015) ATMO 48.

• Brock Beauty Inc (2016) ATMO 44.

• Metropolitan Investment Group Pty Ltd v Autumnpaper Ltd (2016) ATMO 115.

• Vectura GmbH (2016) ATMO 77.

The Vectura decision provides a succinct summary of relevant factors to consider at 28.

16.2 Surname only

Surnames, unless they also have a meaning which refers directly to the goods or services in question, always have at least a limited degree of inherent adaptation to distinguish.

16.3 Combination of a surname and other words/additional matter

If a trade mark consists of a surname combined with words that are considered to be descriptive in relation to the particular goods and / or services it is unlikely that it will be sufficiently inherently adapted to distinguish. For example: JONES CAR REPAIRS in relation to motor vehicle repair and maintenance. The surname JONES is common and when taking into account the factors listed at 16.1 there is nothing to suggest that this word would be considered and understood as anything else other than a common surname. The reference to CAR REPAIRS is directly descriptive of the services claimed. The mark as-a-whole would not be prima facie capable of distinguishing the applicant’s services from those of other traders.

When assessing the registrability of a sign which consists of a common surname, consideration must also be given to the way in which the surname is represented. An unusual representation may serve to render it capable of distinguishing where plain type would not.

16.4 Plural or possessive surnames

16. Surnames



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A word which is not capable of distinguishing because it is a common surname will likewise not be capable of distinguishing in the possessive or plural forms.

If a common surname is applied for in the plural form, and the plural form is an uncommon surname in its own right, a ground for rejection is still appropriate. The plural form of the surname takes precedence over the uncommon surname. For example Scott is a common surname whereas Scotts is a rare surname. A ground for rejection may be applicable for SCOTTS, subject to the factors listed at 16.1, as it is likely to be seen as the plural form of Scott.

A word which appears to be a misspelt surname will be treated in the same way as any other word. A variation in spelling constitutes either a different surname, or a word which is not a surname.

16.5 Word which is both a surname and a geographical name

A word which is both a surname and a geographical name will be assessed against the registrability guidelines for both surnames and geographical names (see paragraph 15 of this Part).

16.6 Word which is both a surname and a descriptive word

A word which is both a surname and a descriptive word should be considered in both contexts. For example, the word TALL, while being an unusual surname, would not be regarded as inherently capable of distinguishing stepladders or clothing for tall people. Similarly, the word SMART has both descriptive and surname significance, and both issues would need to be considered at the time of examination (see paragraph 14.3 of this Part).

16.7 Trade marks consisting of two or more surnames

Two or more surnames which are not, individually, sufficiently adapted to distinguish an applicant's designated goods or services, are prima facie capable of distinguishing when they are combined. The reason for this is that the need for other traders to use the combination in relation to the same or similar goods or services is relatively low. For example, SMITH JOHNSON, SMITH BROWN and BROWN SIMPSON are all combinations which form trade marks which are sufficiently inherently adapted to distinguish.

This applies whether they are words with other meanings or not, or whether the combination has a meaning or not - except, of course, where the meaning is directly descriptive of some characteristic of the goods or services (e.g. SMART LIGHT).

When a hyphenated surname appears on the SFAS, its registrability as a trade mark is considered by its commonness as a hyphenated surname.

16. Surnames



56

If a trade mark consists of two surnames, where the first of them is also a common given name, for example, SCOTT BENNETT or LEWIS THOMPSON, the combination should be treated as the name of a person rather than as two surnames as this would be its ordinary significance. Some difficulty may be experienced by examiners in identifying common given names in languages that they are not familiar with but which are quite significant in the Australian population, for example, Vietnamese or Chinese given names. Some wider research may need to be undertaken to determine the commonness of such names where examiners feel this may be a possibility.

17. Name of a person



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When considering whether the name of a person is inherently capable of distinguishing, the factors identified at 22.16 are relevant and need to be taken into account.

17.1 Trade marks consisting of surnames and a given name

The addition of a given name significantly reduces the likelihood of someone with that surname wishing to use the name in connection with their goods or services.

The name of a person will be considered capable of distinguishing unless (1) the name as a whole is common and (2) the goods and services are commonplace.

A trade mark consisting of the name JOHN SMITH in relation to clothing would therefore attract a ground for rejection under section 41 whereas most full names would be considered acceptable.

17.2 Trade marks consisting of surnames and single common initials

There is a high likelihood that someone with a common surname will need to use that name in conjunction with a common initial. These combinations are not sufficiently adapted to distinguish an applicant's designated goods or services and will attract a ground for rejection under section 41. See paragraph 18 of this Part for examples.

17.3 Trade marks consisting of surnames and single uncommon initials

However there is comparatively less need for someone to use a common surname in conjunction with an uncommon initial and these combinations are more likely to be capable of distinguishing. See paragraph 18 of this Part for examples.

17.4 Trade marks consisting of surnames and two or more initials

The need for a person to use a surname with any two given initials is also far less than the surname on its own or for the surname combined with a more common single initial. These combinations are likely to be considered prima facie capable of distinguishing. See paragraph 18 of this Part for examples.

17.5 The signature of the applicant

The signature of an applicant is always registrable. The fact that it is the applicant's signature should be made clear by way of an endorsement to that effect, such as:

The trade mark consists of the applicant's signature.




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Following a query, if it is established that the signature is not that of the applicant, consideration should be given to section 43 which consider whether use of the trade mark in relation to the goods or services is likely to deceive or cause confusion.


However if the person concerned gives their consent for their signature to be used by the applicant then this should also be made clear by way of an endorsement. For example:

The signature in this trade mark is that of <> who has consented to its use as a trade mark.

If a signature is so legible that it appears to be merely a name in script form, it should be queried in the first instance. If the applicant confirms that it is their signature, then the trade mark will be considered capable of distinguishing. If not, the trade mark will be assessed on its capability to distinguish designated goods or services in the marketplace.

18. Summary of examination practice in relation to names



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Type of Name Practice

Common surname • SMITH (SFAS 114997) • NGUYEN (SFAS 29798) • BROOKES (SFAS 1587)

Ground for rejection - Yes - although if goods or services are very specialised and surname is not extremely common, mark may be considered prima facie capable of distinguishing.

Common surnames with other well-known meanings

• WOOD (SFAS 18248)

Ground for rejection - Depends on circumstances

In most cases the fact that a trade mark has another meaning will not provide a rationale for prima facie acceptance (e.g. WOOD will attract a ground for rejection).

However may be considered prima facie capable of distinguishing in cases where:

• the SFAS occurrence is at the lower end of what would be considered "common"

• the trade mark does not present as a surname

• there is a history of such marks being accepted without evidence

• goods/services are specialised

Common surname and common single initial

• C. BROOKES

Ground for rejection - Yes

The need for other traders to use a common surname with a common initial is less than for the surname on its own but not enough to allow for prima facie acceptance.

Common surname and uncommon single initial

• X. BROOKES

Ground for rejection - No

It is rare for first names to begin with X and therefore unlikely another trader will need to use X. BROOKES

Common surname and two initials • B.J. BROOKES


The possibility of another trader wanting to use a specific combination of two initials even with a




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common surname is considerably less than for the surname on its own or with a single, common initial.

Uncommon surname with or without initials


Full names of persons • JOHN SMITH

Ground for rejection - Yes – although if goods/services are specialised and surname is not extremely common, trade mark may be considered prima facie capable of distinguishing.

• SUE JONES Ground for rejection – Yes- although if goods or services are specialized and surname is not extremely common, trade mark may be considered prima facie capable of distinguishing.

• BILL WONG Ground for rejection may exist, depending upon nature of goods or services.

• GEORGE BROOKES Ground for rejection – only in rare circumstances

Acceptable unless name as a whole is extremely common and the goods/services are also commonplace e.g. JOHN SMITH for clothing would require a ground for rejection.

19. Corporate names



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19. Corporate names

Corporate names are able to function as trade marks. Whether they will qualify for registration will depend upon whether other traders, in the ordinary course of trade and without improper motive, are likely to want to use the same trade mark, or a trade mark closely resembling it, on or in connection with their own goods or services.

For example THE BEST BAKING COMPANY would have no inherent adaptation to distinguish bakery services in class 43. Similarly, LIVERPOOL CABLE COMPANY PTY LIMITED has no inherent adaptation to distinguish electric cables in class 9. However, corporate names that are not likely to be required by other traders to indicate their similar goods and/or services may be prima facie capable of distinguishing (see Avedis Zildjian Co. (1990) 18 IPR 474).

If the trade mark contains a name or surname, the trade mark should be examined on the basis of the criteria for registration of names and surnames. The commonness of a name or surname is only one of the factors that should be considered (see paragraph 16 of this Part).

The trade mark must be considered as a whole. If the trade mark is depicted in a special way or contains other material, of a substantial nature, the combined effect of the words and the special representation and/or added material may render the trade mark prima facie capable of distinguishing (see Standard Camera Ltd.'s Application (1959) 69 RPC 125).

20. Titles of well known books, novels, stories, plays, films, stage shows, songs and musical works



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20. Titles of well known books, novels, stories, plays, films, stage shows, songs and musical works Examiners should not routinely raise a section 41 ground for rejection on the basis that the trade mark consists of a well known title or name of a famous book, novel, story, film, play, stage show, song or musical work. A ground for rejection should only be raised in relation to a trade mark of this nature for goods in classes 9 and 16 and services in class 41 if the work is clearly in the public domain and research shows:

• It will be viewed by purchasers as a description of the content or subject matter of goods or services rather than merely a title OR

• It is perceived to be a classic and has meaning only as the title of a work

The following table provides some illustrative examples:

Trade mark Section 41 Reasons

Macbeth Yes Research shows that Shakespeare’s plays have become classic texts that regularly appear on high school and university syllabus and are performed regularly on the stage. This has resulted in a number of commentaries, literary critiques, study aids and other analysis such that the play itself has become the subject matter of a publication (in the same way that DOGS or GARDENING would be viewed as the subject matter of a publication having this title).

In Cold Blood

No Although this is the title of a “modern classic” (1960s) by Truman Capote it is not clearly in the public domain and thus available for use by others. In addition, IN COLD BLOOD is a commonly used expression and it is unlikely the term used in relation to class 9, 16 or 41 would be seen as the title of the work alone.

The Rise and Fall of the Third Reich

Yes A ground for rejection would exist on the ordinary meaning of the words (as for DOGS). THE RISE AND FALL OF THIRD REICH would be viewed as the subject matter of a publication dealing with the history of Nazi Germany.

A Streetcar Named

No Although this is viewed as a “modern classic” (1940s), is the subject of a numerous critiques, and the words

20. Titles of well known books, novels, stories, plays, films, stage shows, songs and musical works



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Desire have no apparent meaning except as the title of a play by Tennessee Williams, research does not clearly establish the work is in the public domain.

The Da Vinci Code

No A popular work which has been turned into a film, but is not in the public domain.

Little Red Riding Hood

Yes The title of a classic folk tale which is clearly in the public domain. When used in relation to books, films, stage shows, is likely to be seen merely as the title of the work.

Amazing Grace

No The title of a well-known hymn and now a film. The term could be interpreted in a number of ways and it is unlikely to be viewed merely as a hymn title.

Yesterday No The title of a popular Beatles song, but not in the public domain. The word has meaning other than as the title of a song and could be used as an allusive reference in a number of ways. It is unlikely to be seen as merely the title of a song.

Beethoven’s 5th Symphony

Yes Research shows the symphony is one of the most popular and well-known classical music compositions. It is clearly in the public domain, is the subject of a number of critiques and study aids, and has no meaning other than as the title of the musical work.

21. Titles of other books or media



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21. Titles of other books or media

Examiners should raise a ground for rejection under section 41 where a trade mark directly describes the potential subject matter of goods in class 9 and 16, or services in class 41. This is because other traders may have a legitimate need to use the word/s as a description of the subject matter of their own goods or services.

A ground for rejection should not be raised where although the trade mark is indicative of particular subject matter it is sufficiently unusual that other traders will not need to use it to describe the content of their own goods or services.

The following table provides some illustrative examples:

Trade mark Section 41

Reason

DIY RENOVATIONS Yes Indicates that the subject matter of the goods or services is ‘do it yourself’ renovations.

GARLIC DIET Yes Indicates that the subject matter relates to diets incorporating garlic as an important element.

SPORT & LEISURE Yes Indicates that the subject matter is sporting or leisure activities

KICKBOXING POWER

No Although the subject matter is probably kickboxing, the term as a whole is allusory and one that other traders will not need to use to describe the subject matter of their goods and services.

THE WHIMSICAL WORLD OF GARDENING, CAMPING AND CYCLING

No Although the subject matter is probably gardening, camping and cycling, the term as a whole is sufficiently unusual that it is unlikely other traders will need to use it.

22. Numerals



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22. Numerals

Numerals fall within the definition of a sign. Numerals and combinations of numerals are commonly used in many fields to indicate size, quantity, quality, address number, telephone number, date, date of production (e.g. 2000), model or batch number.

Where the numerals have a meaning within the market for the relevant goods/services, or are likely to be seen as indicating any of the aforementioned characteristics, it is likely that other traders, without any improper motive, will desire to use them and therefore they will not be inherently adapted to distinguish one trader's goods or services from those of others. In such cases a ground for rejection under section 41 will be appropriate.

A word spelling out the number or numerals will normally be treated in the same manner as the numeral representation of the number. This was confirmed in Re Appn by David Fraser McManamey (1989) 16 IPR 582 (ROARING FORTIES) and in a UK Registry decision, 2000 Two Thousand trade mark [1992] 4 RPC 65, which refused registration of the trade mark 2000 TWO THOUSAND. In the latter decision it was observed at 67 that ‘the number 2000 is particularly non-distinctive and laudatory because it is increasingly seen as indicating the approaching new millennium’.

23. Combinations of letters and numerals



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23. Combinations of letters and numerals

Trade marks consisting of combinations of letters and numerals will generally be considered prima facie capable of distinguishing goods if there is no common need for their use.

Each combination should be viewed in the context of the goods claimed and on the basis of appropriate research. If the combination has a specific meaning in relation to the goods claimed, then a ground for rejection is appropriate.

Care should be taken in relation to technological products, clothing, automobiles and whitegoods, where letter/numeral combinations are likely to be in common use to indicate size, date, quantity, time, power, speed or strength. For example: size (41R clothing, 4x4 vehicles), date of production (Jun 07), quantity (100 ml), quality (A1), time of production (2 pm), power (120 hp for engines, 40 w for lighting), speed (80 k or 4 MHz) or strength (% vol alcohol, psi 63800 wire).

Combinations of letters and numerals will generally be considered inherently adapted to distinguish services as it is not likely that traders would need such combinations to identify their services. However, if the combination has a specific meaning in relation to the services claimed, then a ground for rejection is appropriate.

Three or more letters, which are in themselves registrable, when combined with a numeral would generally result in a trade mark which is not likely to be required for use by other traders.

24. Trade marks for pharmaceutical or veterinary substances



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24. Trade marks for pharmaceutical or veterinary substances

A ground for rejection under section 41 exists where a trade mark to be used in relation to pharmaceuticals or veterinary substances is identical or confusingly similar to a notified International Non-Proprietary Name (INN) or a notified INN stem.

A ground for rejection under section 43 may also be necessary. For more information in relation to INNS , INN Stems and section 43 see:

• Part 29 Trade Marks Likely to Deceive or Cause Confusion - 4.3 International Non-Proprietary Names (generic names for pharmaceutical substances) and INN stems.

When examining applications for registration of trade marks in class 5 covering pharmaceuticals or veterinary substances, examiners should check the trade mark against the INN list using search tools such as the Search for International Nonproprietary Names for Pharmaceutical Substances on Australian Trade Mark Search and the list of INN stems found a Annex 1 in Part 29 of this Manual.

24.1 Section 41 ground for rejection in relation to INNs

A ground for rejection under section 41 is appropriate where a trade mark to be used in relation to pharmaceuticals or veterinary substances is identical or confusingly similar to a notified INN. This is because an INN is effectively the generic name for a substance and is therefore something which other traders are likely to want to use on or in connection with their own goods.

24.2 Section 41 ground for rejection in relation to INN stems

A ground for rejection under section 41 is appropriate where a trade mark to be used in relation to pharmaceutical or veterinary substances, is in its entirety identical to a notified INN stem. Such a trade mark is not considered capable of distinguishing the applicant’s goods and a ground for rejection would be very difficult to overcome.

In some cases it may also be appropriate to take a ground for rejection in relation to trade marks which are substantially identical (or in rare instances, confusingly similar) to a notified INN stem. Since the INN stem describes families of pharmacologically related substances it should be available for use by anyone in a descriptive context.

25. Devices



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25. Devices

Device trade marks were the first trade marks used to indicate origin. They are independent of language and can serve to distinguish the origin of goods or services even in societies where literacy is low. However, many pictorial signs have become common to the trade and are no longer capable of distinguishing a trader's goods or services in the marketplace.

A trade mark which consists solely of a device which is common to the trade will be considered to have insufficient inherent adaptation to distinguish unless it is depicted in a special or fanciful manner. For example, an ordinary representation of grapes and vine leaves for wine would not be considered capable of distinguishing one trader's wine from that of another. Other examples of devices common to the trade are cats and dogs for pet food, lightning flashes for electrical apparatus, and orchard scenes for fruit.

A device which is an ordinary depiction of the goods upon which, or in connection with which, it will be used is generally not prima facie capable of distinguishing. For example, an ordinary device of a wheelbarrow for wheelbarrows would not be prima facie capable of distinguishing any one trader's wheelbarrows in the marketplace.

Devices which are indicative of origin may be considered not capable of distinguishing. For example, the conventional depiction of a map or national symbol of a country indicating the origin of the goods or where services are provided would not be considered capable of distinguishing those goods or services. Similarly an ordinary representation of the New Zealand bird known as a Kiwi could indicate a geographic connection with New Zealand and be the basis for considering a ground for rejection.

However, an unusual representation could be considered unique enough to be prima facie capable of distinguishing. In Brandella Pty Ltd's Appn (1987) 9 IPR 315 at 318 the Registrar's delegate said:

The kangaroo of course is the pre-eminent national symbol and thus is required by other traders to indicate the Australian origin or Australian content of their goods ... to emphasise the Australian flavour of their goods ... I do not intend to say that any representation of a kangaroo would be unregistrable. A particularly striking or unusual rendering may be so.

25.1 Markings, lines, threads etc.

Some markings, lines, threads etc were registered under the 1955 Act. These signs may have a very low level of inherent adaptation to distinguish and would therefore need to show a very high level of evidence of use, intended use, and/or any other circumstances in order to be accepted. In some cases it may be considered that the trade mark has no inherent adaptation to distinguish and the applicant would therefore need to show sufficient evidence that the trade mark did distinguish the applicant's goods or services, at the date of filing.

25. Devices



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25.2 Images of persons

Portraits, pictures and images of people are generally prima facie capable of distinguishing.

If however the image represented in the trade mark is of a well-known person (or group of people), and the well-known person (or group of people) is not the applicant, consideration should be given to section 43 of the Act, which considers whether use of the trade mark in relation to the goods or services is likely to deceive or cause confusion. For more information in relation to images of persons and section 43 see:


25.3 Barcodes

Barcodes are machine-readable representations of data. They include linear (one-dimensional) barcodes as well as two-dimensional barcodes.

Two-Dimensional Barcodes are represented as geometric shapes and can be used to encode various types of information (such as text, URL, phone number). Examples of two-dimensional barcodes are Quick Response Codes.

Barcodes should be considered in relation to whether other traders are likely in the ordinary course of their business and without any improper motive, to desire to use them, or something so similar to them, upon or in connection with their goods or services. As such a trade mark which consists entirely of a simple barcode is unlikely to be prima facie capable of distinguishing. In contrast a trade mark which contains a barcode along with other material would need to be considered as a whole, in a similar manner to other composite trade marks.

26. Composite trade marks



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Trade marks comprising any combination of words, devices, shapes, sounds, scents and/or colour elements must satisfy the requirement that, when taken as a whole, they are capable of distinguishing designated goods or services in the marketplace. It could be said, however, that combinations are likely to have a higher capacity to distinguish and are more likely to be prima facie capable of distinguishing.

In this regard, Lawrence J. in the Diamond T noted at 380:

In determining the question of (whether a mark is adapted to distinguish the applicant's goods from goods of other manufacturers) it is, in my judgement, immaterial to consider whether any of its component parts are or are not registrable by themselves.

Also note Dodds-Streeton J comments in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) [2012] FCA 81 at 61:

It is established that a combination mark may be capable of distinguishing by the overall impression it creates, even if the individual elements in isolation lack any such capacity, because, for example, they are commonplace in a trade, or, by parity of reasoning, merely or highly descriptive.

In this case the composite trade mark was found to be inherently adapted to distinguish in respect of retailing services in class 35 notwithstanding the descriptive nature of some of the constituents of the trade mark.

On the other hand, composite trade marks consisting of a prominent feature in itself not registrable, such as a geographical name or a surname, and surmounted by mere embellishments such as scrolls or a plain geometric device, would not qualify for prima facie acceptance as a composite trade mark. In this regard, attention is directed to the remarks of Branson J in the Oregon at 507:

It seems to me that I must conclude that the particular manner in which the applicant's trade mark presents the word "Oregon" does not give it inherent adaptability to distinguish the designated goods, the word "Oregon" alone lacking such inherent adaptability. I do not think that the use of upper-case letters, and the oval device surrounding the word "Oregon" are sufficient…. These aspects of the trade mark, whether viewed singly or together, are not, in my view, sufficiently distinctive to give the trade mark a significance other than its ordinary geographic significance or its significance in respect of a particular kind of timber. I find that the applicant's trade mark is not inherently adapted to distinguish the designated goods from the goods of another person.

A composite trade mark will not necessarily be capable of distinguishing simply because it contains a registrable element or even a trade mark which is already registered. The relative proportions of the elements within the trade mark will affect the ability of the trade mark,




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taken as a whole, to distinguish the applicant’s goods or services. The overall impact of the trade mark on the potential purchaser should be considered.

27. Trade marks that include plant varietal name



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27. Trade marks that include plant varietal name

Trade marks that include the name of a particular plant may not be inherently capable of distinguishing goods certain goods, including those classified outside class 31.

This most commonly (but not exclusively) applies to goods classified in classes 5, 29, 30, 32 and 33 that can be made from plant material. If a trade mark includes the name of a plant in a manner that simply describes what the good(s) are made from, other traders also have a legitimate need to use that reference, on the same or similar goods.

As with non-plant considerations, the examiner’s decision should take into account ordinary significance (where a plant name has other meaning in the common domain) in connection with the nature of the claimed goods.

See below examples:

• The word KIPFLER, applied to potato chips classified in class 30. Kipfler is a common and well known variety of potato. The ordinary signification would be that the potato chips are made from Kipfler potatoes. Other traders should also be able to indicate that their potato chips are made from Kipfler potatoes.

• The same approach can be applied to the wording GRANNY SMITH, applied to apple pies in class 30 and apple juice in class 32. This varietal is very well known and understood, and the ordinary signification of this reference would be that the goods are made from Granny Smith apples.

• The word ROMA, applied to processed tomatoes in class 29. In addition to it being a variety of tomato, it is also a well-known and understood geographical location (both a township in Queensland and a reference to Rome, the capital city of Italy). Applied to the goods in question however, the varietal understanding and signification is so strong that a section 41 ground for rejection would be warranted.

Annex A1 Section 41 prior to Raising the Bar



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Annex A1 Section 41 prior to Raising the Bar Prior to the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 which came into force on 15 April 2013, section 41 of the Trade Marks Act 1995 read as follows:

1. For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

Note 1: For applicant and predecessor in title see section 6.

Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).

2. An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

Note: For goods of a person and services of a person see section 6.

3. In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently adapted to distinguish the designated goods or services from the goods or services of other persons.

4. Then, if the Registrar is still unable to decide the question, the following provisions apply.

5. If the Registrar finds that the trade mark is to some extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons but is unable to decide, on that basis alone, that the trade mark is capable of so distinguishing the designated goods or services:

a. the Registrar is to consider whether, because of the combined effect of the following:

i. the extent to which the trade mark is inherently adapted to distinguish the designated goods or services;

ii. the use, or intended use, of the trade mark by the applicant;

iii. any other circumstances;

the trade mark does or will distinguish the designated goods or services as being those of the applicant; and

Annex A1 Section 41 prior to Raising the Bar



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a. if the Registrar is then satisfied that the trade mark does or will so distinguish the designated goods or services-the trade mark is taken to be capable of distinguishing the applicant's goods or services from the goods or services of other persons; and

b. if the Registrar is not satisfied that the trade mark does or will so distinguish the designated goods or services-the trade mark is taken not to be capable of distinguishing the applicant's goods or services from the goods or services of other persons.

Note 1: For goods of a person and services of a person see section 6.

Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

6. If the Registrar finds that the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons, the following provisions apply:

a. if the applicant establishes that, because of the extent to which the applicant has used the trade mark before the filing date in respect of the application, it does distinguish the designated goods or services as being those of the applicant-the trade mark is taken to be capable of distinguishing the designated goods or services from the goods or services of other persons;

b. in any other case-the trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons.

Note 1: Trade marks that are not to any extent inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:

a. the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or

b. the time of production of goods or of the rendering of services.

Note 2: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (1) and 7(3) and section 8).

Annex A2 Flowchart of "Capable of Distinguishing"



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Annex A2 Flowchart of "Capable of Distinguishing"

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