23.5. Specific evidence requirements for trade marks with no inherent adaptation to distinguish

Some trade marks have no inherent adaptation to distinguish (i.e. those considered under s 41(3)) the applicant's designated goods or services from the goods or services of other persons. The evidence supporting registration of such trade marks consequently must be more compelling.   

5.1  What kind of trade marks are these?

This category of trade marks includes technical terms or devices, words such as 'cheap' or 'excellent', and many geographical names that have a direct link to the goods and/or services provided.  

Note 1:  Trade marks that are not 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.

The following list of decided cases show examples of trade marks of this kind:

• Eutectic Corp v Registrar of Trade Marks (1980) 32 ALR 211 ('Eutectic')
• Oxford University Press v Registrar of Trade Marks [1990] FCA 175 ('Oxford')
• Blount Inc v The Registrar of Trade Marks [1998] FCA 440 ('Oregon')
• Ocean Spray Cranberries Inc v Registrar of Trade Marks [2000] FCA 177 ('Cranberry Classic')
• Philmac Pty Limited v the Registrar of Trade Marks [2002] FCA 1551 ('Terracotta')
• Primary Health Care Ltd v Commonwealth [2017] FCAFC 174 ('Primary Health Care')
• Bendigo and Adelaide Bank Ltd v Community First Credit Union Ltd [2021] FCAFC 31 ('Community Bank')

5.2  What does the evidence need to establish?

The Registrar must be satisfied that the trade mark is not capable of distinguishing, having regard to the extent of use of the trade mark at the filing date.

Evidence that is filed in support of trade marks that have no inherent adaptation to distinguish should generally show extensive use as a trade mark such that it is likely to be perceived as a brand distinguishing the goods or services of the applicant in the marketplace.

The Registrar does not have discretion under s 41(3) to consider intended use of the trade mark or other relevant circumstances. As such, any evidence of use must relate to use in Australia of the trade mark applied for or a substantially identical mark.  

 

5.3  Evidence must show use in Australia before the filing date

Acceptance of a trade mark that is not to any extent inherently adapted to distinguish is on the basis that the trade mark is already distinguishing the applicant's goods/services in the Australian marketplace.  To be able to demonstrate this, the use must be before the filing date.  Use after that date will not be considered.  Evidence of use overseas could only be an adjunct to the main evidence demonstrating use in Australia, and would not of itself be convincing.

 

5.4  The scope of a registration for a trade mark that is not to any extent inherently adapted to distinguish must reflect actual use

As acceptance under this provision is on the basis of established distinctiveness, the scope of the registration must reflect the use demonstrated in the evidence.  This means that the specification, geographical area or even the trade mark may need to be amended (if acceptable under s 65) to conform with the use demonstrated in the evidence.

 

5.4.1  Geographical limitations:

A geographical limitation should be imposed if the evidence clearly shows that the trade mark distinguishes the applicant's goods or services in a particular area only.

The form of endorsement normally applied is as follows:

Registration of this trade mark is limited to the State of <   >.

 

5.4.2  Restrictions to the goods and services specification

Applications proceeding despite being not to any extent inherently adapted to distinguish require a demonstrated capacity to distinguish for particular goods/services.  Therefore, the specification should be restricted to accord with the actual evidence of use.  A wider specification is not acceptable.

 

5.5  Aids for assessing evidence of use for trade marks not to any extent inherently adapted to distinguish

The following criteria are a useful guide when assessing a trade mark that is not to any extent inherently adapted to distinguish. While each one should be carefully considered, it is not essential that they all be answered in the affirmative and there is no authority for taking any one of them, in isolation, as mandatory.

• Is the sign used as a trade mark?
• Has the applicant clearly promoted the sign as a trade mark?
• Does the evidence show that the sign is, as a matter of fact, operating in the marketplace as an indication of trade origin?
• Has the primary meaning of the sign been displaced to the extent that, in relation to the relevant goods/services, it has come to denote those of the applicant?
• Does the evidence overall show that the sign does, in fact, distinguish the goods/services of the applicant?

5.6  Additional support for evidence regarding trade marks not to any extent inherently adapted to distinguish

As the applicant for a trade mark which is not to any extent inherently adapted to distinguish needs to demonstrate that the buying public already recognises the trade mark as an indicator of trade source, some additional information is often useful. This can be in the form of supporting declarations or customer surveys.

 

5.6.1  Supporting declarations

Supporting evidence from other persons of standing in the trade are useful for applications falling into this category.  This evidence should also be in the form of a declaration. A sample layout for guidance in the presentation of trade declarations is given at Annex A3 of this Part.

 

5.6.2  Customer surveys

Professionally conducted customer surveys may be provided. However, while these are useful, there is no absolute requirement that they be supplied.  Justice Branson, in the Oregon decision, supra, commented at [62]:

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.