The Applicant submits that a finding that the Trade Mark lacks inherent capacity to distinguish the Applicant's goods would be inconsistent with other trade marks on the Australian Trade Marks Register which it says were accepted and registered without objection. In its written submissions the Applicant relies on five trade marks, reproduced at Annexure A of this decision, which it says were 'accepted recently by the Registrar on a first clear report'.

The rationale for acceptance of these trade marks is not before me, although some of the trade marks are a stylised single letter 'G', they are, when considered as a whole, different trade marks and applied to different goods and services. In any event, whether a trade mark is sufficiently inherently adapted to distinguish is not assessed with regard to the state of the Australian Trade Marks Register.[8]

The second matter mentioned by Ms Baird is that Ocean Spray adduced evidence of other registered marks that contain, or consist wholly of, the word "classic". That evidence should be disregarded, for the reasons expressed by Jacob J in British Sugar at 305: > > "Both sides invited me to have regard to the state of the register. Some traders have registered marks consisting of or incorporating the word `Treat'. I do not think this assists the factual inquiry one way or the other, save perhaps to confirm that this is the sort of word in which traders would like a monopoly. In particular the state of the register does not tell you what is actually happening out in the market and in any event one has no idea what the circumstances were which led the registrar to put the marks concerned on the register. It has long been held under the old Act that comparison with other marks on the register is in principle irrelevant when considering a particular mark tendered for registration, see e.g. MADAME Trade Mark [1966] R.P.C. 541 and the same must be true under the 1994 Act. I disregard the state of the register evidence." > > I add only that, although consistency in public administration is desirable, a public officer is not justified in persisting with error. Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not.

Finally, the Holder notes that the Trade Mark has been registered in various other jurisdictions including the United Kingdom, New Zealand, Singapore, Japan, China, Switzerland, Philippines, Norway, Morocco, Türkiye, Kenya, Israel, Indonesia, Egypt, Colombia, and Algeria. While I accept the principle outlined by the Delegate in Unilever PLC[10] that if the matter approaches the borderline, it would be difficult to justify placing additional obstacles in the way of a trade mark that is already accepted in comparable jurisdictions under analogous circumstances, the first step is to reach an independent conclusion as to whether the Trade Mark is inherently adapted to distinguish the Holder's Goods and Services; decisions made by other countries only being relevant, at best, in borderline cases (especially noting the different case law of the various countries and the potential that there may be use in those countries that has not occurred in Australia). I do not consider this a borderline case and indeed my finding here is consistent with previous decisions of this office.
As the Trade Mark is not sufficiently inherently adapted to distinguish the Holder's Goods and Services and there is no evidence relevant to the provisions of s 41(4)(b), the IRDA must be rejected under s 41 of the Act.

(1) The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:

(2) The Registrar may accept the IRDA subject to conditions or limitations.

(3) The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:

(b) there are grounds for rejecting it, in whole or in part.

I am satisfied that there is a ground for rejecting the IRDA under s 41(4) of the Act. I must reject the IRDA in accordance with reg 17A.24 which I now do. If, however, the Registrar is served with a notice of appeal within one month of the date of this decision, I direct that the disposition of the IRDA be in accordance with the Court's direction or order.

Class 9: Computers; quantum computers; computer hardware; computer hardware and software for information technology analysis and data management; computer hardware and software for application development; computer hardware and software for cloud computing; computer hardware and software for cognitive computing; computer hardware and software for artificial intelligence; computer hardware and software for blockchain technology; computer hardware and software for quantum computing and quantum programming; computer hardware, namely, magnetic tape units (data processing), magnetic tapes, printed circuits, integrated circuits, computer keyboards, compact disks (audio-video), optical disks, couplers (data processing), diskettes, magnetic data carriers; computer hardware, namely, video screens, scanners (data processing equipment), computer printers, interfaces (data processing), readers (data processing), computer software (recorded programs) for data processing, microprocessors, modems, monitors (hardware), computers, computer memories, computer peripheral devices; computer adapters; computer components; data processing equipment; computer apparatus for the management of data and information; semiconductors; machine-readable electronic data media; magnetic disks; disk drives; tape recorders; calculating machines; cash registers; facsimile machines; video recorders; videotapes; electric cells and electric batteries; computer chips; boards for integrated circuits; computer accessories, namely, computer communications servers; computer carrying cases; computer interface boards; computer cables and computer cable parts; fax modem cards for computers; computer accessories, namely, screen filters, computer mouse pads, radio pagers, joysticks; electric converters, namely, digital-to-analog, analog-to-digital and step-by-step voltage switching equipment; computer mice; integrated circuit cards and smart cards, adapters for integrated circuits and adapters for smart cards; readers for integrated circuit cards and smart cards; microcomputers; electrical power supplies; projectors (projection apparatus); remote controls for computers; inverters, surge protectors and uninterruptible power supplies; point-of-sale terminals (payment terminals); computer servers; computer storage devices, namely high-speed storage subsystems for storage and backup of electronic data either locally or via a telecommunication network; downloadable computer programs; recorded computer programs; recorded or downloadable computer software platforms; downloadable computer software applications; video game software; operating system software and programs; software used for accessing a global computer network; document management software; database management software; software used for locating, retrieving and receiving text, electronic documents, graphics and audiovisual information on enterprise-wide internal computer networks and local and wide-area global computer networks; software used for software development and web authoring and user manuals in electronic format sold as a unit with these products; computer software for use in controlling the operation and execution of computer systems, programs, and computer networks; computer software for use in connecting disparate computer networks and systems, computer servers and storage devices; computer programs for linking computers together and for enabling computer activities across a global computer network; computer software for managing systems, software and processes that exist within an information technology environment; interactive computer systems combining hardware and software for use in managing and analyzing data and instruction manuals in electronic format sold therewith; cloud computing systems, namely, communication networks integrating computer hardware and software for dynamic provisioning, virtualization, and consumption metering of computer resources; recorded and downloadable cloud computing software for deploying and managing virtual machines on a cloud computing platform; computer systems, namely, computer hardware and computer software for developing and integrating artificial intelligence, namely, machine learning, deep learning and natural language processing which are capable of collecting, organizing and analyzing data; computer systems, namely, computer hardware and computer software for integrating Natural Language Processing (NLP), Computational Linguistics (CL), Information Retrieval (IR) and Machine Learning (ML) which is capable of understanding general human queries and formulating responses; software for developing, building and operating blockchain technology applications; computer hardware and computer software for developing and testing quantum algorithms; documentation and instruction manuals downloadable on machine-processible electronic data media and concerning computers or computer programs; downloadable electronic publications; downloadable electronic publications on computer media, namely, user manuals, guidebooks, brochures, information sheets, written presentations and teaching material in the field of computing, computer networks, computer storage, computer operating systems, information technologies, database management, cloud computing, artificial intelligence, blockchain technology and quantum computing

Class 37: Building construction; computer repair and installation services; computer hardware maintenance services; installation and maintenance of computer hardware for computer networks.

Class 42: Computer programming; Software as a service (SaaS) services featuring software for data management; software as a service (SaaS) services featuring software for cloud computing; software as a service (SaaS) services featuring software for artificial intelligence; software as a service (SaaS) services featuring software for cognitive computing; Software as a Service (SaaS) services featuring software for blockchain technology; software as a service (SaaS) services featuring software for quantum computing and quantum programming; software as a service (SaaS) services featuring software for constructing, analyzing and running quantum programs and quantum algorithms; software as a service (SaaS) services featuring software for developing and testing quantum algorithms; computer programming and computer consulting services for artificial intelligence; computer programming and computer consulting services for cognitive computing; computer programming and computer consulting services for information management; computer programming and computer consulting services for data management; computer programming and computer consulting services for cloud computing; computer programming and computer advisory services for blockchain technology; computer programming and computer consulting services for quantum computing; computer programming and computer consulting services for software as a service (SaaS); design, installation, updating and maintenance of software; computer software and hardware design for the benefit of third parties, and professional advisory services in the field of computers; technical support services, namely, troubleshooting of computer program and software problems; computer services, namely, design, creation and maintenance of websites for others; analysis of computer systems, integration of computer networks and databases, computer programming for third parties, all intended for commercial interactions on global computer networks; design of computer and software interconnection systems, namely electronic interconnection of computers and software; computer software and hardware testing services (quality and technical controls); technical project studies in the field of computer hardware and software; consultancy services in the field of computer hardware, namely consultancy regarding computing research and development; computer advice and assistance concerning Internet use; rental of computers and software; scientific and industrial research, namely research and development of new products, biological research, bacteriological research, chemical research, cosmetology research, mechanical research, geological research, technological research, pharmaceutical research, scientific research for medical purposes; information technology consulting; computer system integration services; consulting services in the field of design, selection, implementation and use of computer hardware and software systems for third parties; technical support services, namely, troubleshooting computer program problems; computer system design services for third parties; design of computer systems for interconnecting computer hardware and software, namely, electronic interconnection of computers and software; computer programs and computer hardware testing services, namely, testing of software, computers and servers to ensure their proper functioning; cloud computing services pertaining to services for computer hardware and software integrated into a network for dynamic provisioning, virtualization, and consumption metering of computer resources; providing virtual computer systems and virtual computer environments through cloud computing; design and development of software for cloud storage of data; cloud computing hosting provider services; electronic storage of electronic data and data recovery; data security service; computer support services with respect to software rendered by computer specialists; design of computer hardware for computer networks; design and development of computers; quantum computing; consulting services with respect to computer and Internet security and data encryption; technical support services, namely, diagnosing and solving computer hardware problems.

[1] [2016] ATMO 96, [9] (Hearing Officer Wilson).

[2] [2016] ATMO 32, [5] (Hearing Officer Worth).

[3] [2018] ATMO 46, [5] (Hearing Officer Worth).

[4] [2017] ATMO 25, [38]-[40] (Hearing Officer Kirov) (citation omitted).

[5] [2017] FCAFC 56, [236] (Greenwood, Besanko and Katzmann JJ).

[6] QWB Residential [2021] ATMO 2, [19] (Hearing Officer Irgang).

[8] Paco Nominees Pty Ltd as trustee for the HVRC Family Trust [2024] ATMO 211, [16], Hearing Officer Galloway.

[10] [2001] ATMO 39 (Hearing Officer Williams).

Property Laws Amendment (Raising the Bar) Act 2012

Marks Regulations 1995

International Business Machines Corporation [2026] ATMO 16 (3 February 2026)

(2) In determining whether a trade mark is inherently adapted to distinguish the services of a trader, the answer largely depends 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 goods: Clark Equipment Co v Registrar of Trade Marks ("Clark Equipment") [1964] HCA 55; (1964) 111 CLR 511 per Kitto J at 514.

(4) Directly descriptive words, like geographical names, are not prima facie suitable for the grant of a monopoly conferred by registration of a trade mark because use of them, as trade marks, will "rarely eclipse" their "primary" (that is, their ordinary) signification. Such words (or a word) are unlikely to be inherently, that is to say, "in [their] own nature", adapted to distinguish the applicant's goods. Traders may legitimately want to use such words in connection with their goods or services "because of the reference they are 'inherently adapted to make' to those goods": Cantarella Bros Pty Limited v Modena Trading Pty Limited ("Cantarella") [2014] HCA 48; (2014) 254 CLR 337 at [57] per French CJ, Hayne, Crennan and Kiefel JJ.

QWB Residential [2021] ATMO 2 ('QWB Residential')

Paco Nominees Pty Ltd as trustee for the HVRC Family Trust [2024] ATMO 211 ('Paco Nominees')

International Business Machines Corporation [2026] ATMO 16 (3 February 2026)

At a glance

Court

Decision date

Source

Judgment (23 paragraphs)

Legislation Cited (3)

Cases Cited (8)

International Business Machines Corporation [2026] ATMO 16 (3 February 2026)