22.7. Examination

Date Published

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?


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:

Trade Mark



Class 30: Chocolate coated peanuts and pretzels

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.       

Trade Mark



Class 3: Cosmetics, including face masks

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.

Trade Mark


Class 39: Arrangement of sightseeing tours; Arranging of sightseeing tours; Arranging of travel tours; Bicycle tours; Booking agency services for sightseeing tours; Conducting of sightseeing tours; Conducting sightseeing tours; Operating of tours; Organisation of sightseeing tours; Organisation of tours; Organising tours; Personal tour guide services; Provision of information relating to tourism; Provision of sightseeing tours (transport); Provision of tours; Services for the arranging of tours; Sightseeing (tourism); Tour operating; Tour operator services; Tour organising; Tour reservation services; Tourist agency services (travel); Tourist guide services; Travel tours and cruises

In World Expeditions Travel Group Pty Ltd v Australian Wilderness Adventures Pty Ltd [2017] ATMO 141 the delegate refused the application on the basis that the sign was not sufficiently inherently adapted to distinguish the claimed services. Although the delegate considered the words ‘trektasmania’ to be without any inherent adaptation to distinguish the services, when considering the sign as a whole the delegate provided the following regarding the device:

The stylised, nondescript nature of the device element furnishes the Trade Mark with a slight degree of inherent adaptation to distinguish the services of the Applicant from other traders, but not enough to permit me to conclude that the Trade Mark as a whole is capable of distinguishing in its own right.

22.7.9 What sort of use by other traders is contemplated?

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

… 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. (emphasis added)

It is important to note that in that same decision Kitto J said the following at 517:

…it is no answer to say that if registration be granted such a manufacturer may nevertheless describe his goods as ‘made in Michigan’ or in some other ways indicate that Michigan is their place of origin. He is not to be excluded by the registration of a trade mark from any use of the word Michigan that he may fairly want to make in the course of his business. (emphasis added)

This language makes clear that what must be contemplated in assessing the inherent adaptation of a sign is any use a trader is likely to fairly desire to make of it, be it as a trade mark or to describe their goods and services.

22.7.10 So Nearly Resembling

When assessing a sign’s inherent adaptation, we need to consider more than just the exact sign being applied for. This was discussed by Perram J in in Aldi Foods Pty Ltd v Moroccanoil Israel Ltd [2018] FCAFC 93 at [125]:

… it is not just the desire of traders to use the word which is relevant; it is also their potential desire to use words nearly resembling that word. So here one must examine not just the inherent adaptability to distinguish the Respondent’s goods of MOROCCANOIL but also of MOROCCAN OIL, MOROCCAN-OIL and perhaps, without deciding, OIL OF MOROCCO. The necessity so to reason was referred to by Kitto J in Clark (at 513) and reflects the reality that once registration of a mark is achieved, it will be infringed not only by persons using it without its owner’s permission but also by those using ‘a sign that is substantially identical with, or deceptively similar to, the trade mark’: s 120(1) of the Act.

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