22.7. 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 careful before basing conclusions on unsupported assertions that are not matters of general knowledge or notorious fact and cannot 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.

22.7.1 The two limbs of inherent adaptation to distinguish

The Cantarella decision makes clear that when considering the inherent distinctiveness of a trade mark, consideration should be given to:

First Limb): Does the sign being applied for have an ordinary signification (meaning) to anyone in Australia purchasing, consuming, or trading in the relevant goods/services?

AND

Second Limb): Is it likely other traders would desire to make honest use of the sign for its ordinary signification (meaning) upon or in connection with their own similar goods and/or services?

If the answer to both considerations is yes, then the mark is not sufficiently inherently adapted to distinguish any one trader’s goods and/or services. These two limbs are another way of expressing the test for distinctiveness from Michigan.   

22.7.2 Ordinary Signification

Ordinary signification refers to the ordinary meaning of a sign. To resolve any doubt, numerous judgements post Cantarella have confirmed the ordinary meaning of a sign is its ordinary signification:

• Primary Health Care Ltd v Commonwealth [2017] FCAFC 174.
• Bendigo and Adelaide Bank Ltd v Community First Credit Union Ltd [2021] FCAFC 31.
• Goodman Fielder Pte v Conga Foods Pty Ltd [2020] FCA 1808 [214].
• Bohemia Crystal Pty Ltd v Host Corporation Pty Ltd [2018] FCA 235 [87].
• Metro Business Centre Pty Ltd v Centrefold Entertainment Pty Ltd [2017] FCA 1249 [90].

22.7.3 How do you assess the ordinary signification or meaning of a sign?

The ordinary signification of a sign is determined by reference to those ‘persons who will purchase, consume or trade in the goods’ (Cantarella at [59], see also at [75]) or ‘any person in Australia concerned with the goods’ (Cantarella at [70]), which the High Court also referred to as the ‘target audience’ (Cantarella at [28], [30] and [71]).

The assessment of a sign’s ordinary signification should be approached by asking how the sign would be ‘generally understood’ by the target audience (Cantarella at [72], agreeing with the approach taken by the primary judge) as it relates to the relevant goods and/or services. 

22.7.4 Direct and allusive references

Inherent adaptation to distinguish exists on a continuum. On one end there are signs that are sufficiently inherently adapted to distinguish the designated goods and services. These may have no meaning at all, or no meaning in relation to the goods and services. They may also convey an allusive, covert, or metaphorical meaning. On the other end are, for example, direct references to the goods or services that have no inherent adaptation to distinguish. Between these two ends of the continuum, exist those signs that have some level of adaptation to distinguish but not a sufficient degree to make them prima facie inherently adapted to distinguish.

22.7.5 Other categories of ordinary signification

It is important to remember direct references are not the only reason a sign may lack the inherent capacity to distinguish. Other examples include laudatory epithets, geographical names, surnames, and words that have lost distinctiveness.

22.7.6 Does the sign need to be in use for it to have an ordinary signification?

Research may or may not demonstrate use of a sign, but this does not determine whether a sign has an ordinary signification. The signification of a sign arises out of the sign itself. Take the following for example:

Even if you were to find no use of the sign above, or if the use found was use as a badge of origin, neither would alter the fact that the sign has a clear and tangible ordinary meaning/signification.

Although use can be indicative in some instances it is not required to support an assessment that what has been applied for as a trade mark has an ordinary signification or ordinary meaning.

22.7.7 Multiple meanings

While it is possible for a sign to have multiple meanings, if any of those meanings are relevant to the claims, then each would constitute an ordinary signification of the sign that will warrant consideration under the second limb.

Take for example the word GREEN. Depending on the context, this may be problematic because it is a colour, because it is a surname and/or because it indicates the claimed goods or services are environmentally friendly. Any or all of these may be an ordinary signification of the sign depending on the meaning conveyed to the target audience when applied to the goods and services specified.

22.7.8 Honest desire to use the sign for its ordinary signification (ordinary meaning)

The second limb assesses the likelihood of other persons desiring to use the sign for its ordinary meaning.  There is no requirement for actual use to establish others are likely to desire to use the sign. The ordinary signification or ordinary meaning of a mark stems from what it conveys to consumers. This can be influenced by whether there has been use in the marketplace but is not dependent on it.       

Is it likely, that a trader would desire to use this sign, or one nearly resembling it, in connection with their similar goods? The meaning of the word ‘mud’ in the context of cosmetics is likely a wet viscous combination of water and minerals. This is often touted as an ingredient in, or comprising the whole product, of cosmetics and particularly face masks. The suffix ‘-less’ means ‘without’. It converts the noun ‘mud’ into the adjective ‘mudless’ – indicating something without mud. As such the mark consists entirely of a direct reference to a characteristic of the goods (they do not contain mud), it is likely that others would wish to use MUDLESS in connection with the claimed goods. This would be the case whether we could find this word being used or not. Importantly the ordinary meaning would be clear to anyone including a potential purchaser.