There is a presumption under the Act that a trade mark is registrable. Section 33 specifies that the Registrar must accept a trade mark for registration unless he or she is satisfied that the trade mark application has not been made in accordance with the Act and Regulations, or that there are grounds for rejecting it. The grounds for rejection are set out in the Act and Regulations, and the Registrar must be satisfied that there are good reasons for rejecting the application under those grounds.

In respect of the Registrar being satisfied, in Blount Inc v Registrar of Trade Marks (1998) 40 IPR 498 (the “Oregon” case) Branson J said (at 504):

Where the Act requires the Registrar to be 'satisfied' of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities: Rejfek v McElroy (1965) 112 CLR 517; at 521. That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.

While there has been some discussion in the Courts about the appropriate standard to be met by the Registrar in being satisfied, the majority of relevant decisions have agreed that the ‘balance of probabilities’ is the appropriate standard for the Registrar to follow.

Presumption of registrability during examination of an application, and during opposition and appeal was addressed by Kenny J in Sports Warehouse, Inc v Fry Consulting Pty Ltd [2010] FCA 664 at 26-28:

26. At the acceptance stage under s 33 of the Act and on appeal from such a decision, there is said to be a presumption of registrability: see Woolworths at 372 [24] (French J). This presumption arises from s 33, pursuant to which an application must be registered, unless the Registrar is satisfied that there is a ground for rejecting it. In other words, as Sundberg J said in Chocolaterie Guylian at 67 [16], “a mark will be presumed registrable unless the Registrar is satisfied, on the balance of probabilities, that a ground to reject it exists”.

27. There is also said to be a presumption of registrability at the opposition stage and in an appeal under s 56 (as here): see Pfizer Products Inc v Karam [2006] FCA 1663; (2006) 70 IPR 599 (‘Pfizer Products’) at 602 [8] (Gyles J).

It is clear from both the Oregon and Sports Warehouse decisions (as well as from other decisions from the Courts) that once the Registrar is satisfied on the balance of probabilities that a ground for rejection does exist, then the presumption of registrability no longer forms a part of the Registrar’s decision making process.

4.1

The presumption of registrability applies when the Registrar or their delegate is not satisfied that any grounds for rejecting a trade mark application exist. If this is the case, the application must be accepted for possible registration provided it is otherwise in accord with the Act and Regulations.

4.2

If the Registrar or their delegate is satisfied that a ground (or grounds) for rejection does exist, then the presumption of registrability no longer applies. The ground or grounds upon which rejection is based must be articulated in a specific and supported manner, and documented in line with administrative requirements.