Re: International Registration Designating Australia number 2536666 (International Registration number 1847579) (class 42) - 1-CLICK CLUSTERS - in the name of Lambda, Inc.

2025 ATMO 247

Trade Marks Regulations 1995 (Cth) - regulation 17A.24 - ground for rejection under s 41(4) - no evidence of use provided - extension of protection refused.

1. Lambda, Inc. ('Holder') has sought the extension of protection of its International Registration Designating Australia ('IRDA') 1847579 to Australia as detailed below:

Trade Mark: 1-CLICK CLUSTERS (the 'Trade Mark')

Class 42: Infrastructure as a service (IaaS) services, namely, hosting software for operating virtual servers for use by others; providing computer technology services that enable users to develop software tools for machine learning, deep learning, and artificial intelligence tools via a website; providing online, non-downloadable software for developing software tools for machine learning, deep learning, and artificial intelligence tools; providing online, non-downloadable software for implementing and optimizing machine learning, deep learning, and artificial intelligence computer models; server hosting; hosting of electronic databases and virtual computing environments; electronic data storage services, namely, providing remote server storage to others; technical consulting services in the fields of machine learning, deep learning, and artificial intelligence; providing temporary use of online non-downloadable software for use in data analytics, machine learning, and artificial intelligence; providing virtual computer systems and virtual computer environments through cloud computing; software as a service (SaaS) services featuring cloud computing software for electronic storage of data; software as a service (SaaS) services featuring software for managing software application deployments and scaling based on usage; software as a service (SaaS) services featuring software for management of capacity and usage of servers and graphics processing units; computer services, namely, cloud hosting provider services; computer services, namely, provisioning virtual computer systems and virtual computer environments for others and providing computer software maintenance, data encryption, and monitoring to ensure proper functioning therefor. ('Holder's Services').

1. The IRDA was examined under reg 17A.12 of the Trade Marks Regulations 1995 (Cth)[1] and a Notice of Provisional Refusal issued raising grounds for rejection under s 41(4). The Examiner objected that the Trade Mark is to some extent, but not sufficiently, inherently adapted to distinguish the Holder's Services.
2. The examiner's report provided:

Your IRDA is refused because your trade mark is not capable of distinguishing the specified goods/services. This is because your trade mark is 1 -CLICK CLUSTERS.

The term '1 -Click' (also spelled 'one click', or 'one-click'), is a term used by traders who provide services over the internet to refer to a mechanism in which a user can make a service request with a single click of a computer mouse.

The term 'Clusters' is used in cloud computing and servers to refer to the deployment of multiple servers configured in an interconnected cluster to work together as a single entity.

In relation to your services, your trade mark is descriptive as an indication to the consumer that you will provide software and computer services for the deployment of server clusters upon the request of a user with a single mouse click. Other traders should be able to use your trade mark, or another trade mark nearly resembling it, in connection with services similar to yours.

1. The Holder was given the option of providing evidence of use of the Trade Mark to overcome the ground for rejection. The Holder's legal representative responded by providing written submissions arguing that the Trade Mark was inherently adapted to distinguish and referred to Cantarella Bros Pty Ltd v Modena Trading Pty Ltd[2] ('Cantarella'). The Holder stated:

We submit that 1-CLICK CLUSTERS is prima facie registrable at the outset because it does not have an inherent meaning sufficiently tangible enough to render the mark incapable of distinguishing in a trade mark sense. Even if the mark is highly allusive, obviousness of meaning (with the benefit of hindsight) does not equate to ordinary signification. If a mark is prima facie registrable under the first step of the test (which we submit is the case here), Cantarella confirms that it is not necessary to consider the second step, being "to test the likelihood that honest traders may wish to use the word in connection with their goods because of its ordinary meaning".[3] In that regard, the Court noted that:

"the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive or metaphorical".[4]

1. The examiner maintained the ground for rejection under section 41(4). The second report from the examiner stated:

...The relevant test must not be reversed or misunderstood, namely, it is not the case that the test is to be decided on the consumers searching the services first and then working backwards to the trade mark. Instead, we are to consider the mark first, consider its ordinary signification, and then consider, when applied to the services, whether another trader would be without improper motive to desire to use something nearly resembling it in the course of trade.

I submit to you that the trade mark as a whole has a direct meaning when applied to the services, is not fanciful, and does not require a dissection to understanding this meaning.

Such a conclusion can be drawn not merely from how the holder uses the mark, but by how similar terms are in use by multiple traders, and by how the marketplace is describing the holder's use of the mark in a descriptive manner (non-exhaustive):

https://cerebralvalley.ai/blog/lambdas-1-click-clusters-is-your-on-demand-gpu-multi-node-superpower7dOdgCVhbkA2cj40YysEHV "... on-demand and self-serve GPU cluster... "

The term 'one-click' or '1-click' has become genericised since Amazon launched one-click buying in 1999 (https://en.wikipedia.org/wiki/1-Click) and is a descriptive term to indicate the manner in which a service or transaction is engaged (through the use of a computer with a single mouse click). It is not covert or allusory, and the mark is not representative of invented words, and their combination appears to be an apt one (nearly resembling '1-click server clusters' etc.) rather than unlikely or unusual.

The relevant test is not one which considers the trade mark from the perspective of consumers per se, but instead considers the 'target audience', being anyone purchasing, consuming, or indeed, trading in the relevant services, noting the test as articulated in Cantarella considers whether other traders are likely to desire to use something nearly resembling the mark.

The ordinary meaning of the trade mark can be derived from the mark itself, and is not dependent on whether the mark is currently in use, as it appears likely that another trader would be without improper motive to desire to use mark nearly resembling it in the course of trade, even if no one is currently using the same mark right now.

1. The Holder disagreed with the examiner and requested that the matter be reviewed by a Principal Examiner stating:

The examiner has quoted Wyeth LLC [2013] ATMO 39, which for this case relevantly states that:

• submissions to the effect that 1-CLICK CLUSTERS is not directly descriptive of the specified services does not assist the applicant;

o directly descriptive trade marks most likely fall into the category of marks which have no inherent adaption to distinguish; and

o the inquiry under section 41 is not whether 1-CLICK CLUSTERS directly describes the services;

• rather, it is whether 1-CLICK CLUSTERS does or will distinguish the specified services from those of other traders, tested by reference to an evaluation of whether other traders are likely to think of and desire to use 1-CLICK CLUSTERS in respect of their own services in good faith. Wyeth does not accurately reflect the law on inherent distinctiveness in Australia.

a) Wyeth is an ATMO decision under the now repealed form of section 41, so it should be treated with caution. The current section 41(2) makes it perfectly clear that an examiner must find that 1- CLICK CLUSTERS is prima facie not capable of distinguishing the holder's services before raising an objection under section 41(4). That is, the onus lies on the examiner to be satisfied, on the balance of probabilities but with a presumption of registrability, that 1-CLICK CLUSTERS is not sufficiently inherently adapted to distinguish the holder's services from those of other traders.

b) Wyeth was handed down in 2013, before the High Court's decision in Cantarella, 1 which clarified the law on inherent distinctiveness in several subtle but important respects. Accordingly, relying on any statement of the law on inherent distinctiveness in an ATMO decision before Cantarella is highly unlikely to be entirely accurate (which is the case here). The Registrar must follow Cantarella and subsequent cases in assessing inherent distinctiveness, and should largely disregard pre-Cantarella ATMO decisions as statements on the current legal position.

c) Cantarella clarifies that Faulding[5] (and the case citing it) was wrong to the extent it suggested that the Clark Equipment[6] test focus solely on the likely conduct of other traders in the market. Instead, assessing inherent distinctiveness involves a two-step test. Relevantly, the test does not involve first assessing distinctiveness by asking whether other traders are likely to think of and desire to use the mark in respect of their own services without improper motive. We submit that Wyeth is likewise wrong on this point ("Rather, it is whether the Trade Mark does or will distinguish the specified goods and services from those of other traders, tested by reference to an evaluation of whether other traders are likely to think of and desire (not "need") to use the Trade mark in respect of their own goods and services, without improper motive.").

d) Cantarella also clarifies that the Clark Equipment test requires, as the first step, to determine the ordinary signification (ie. the "direct reference" inherent meaning) of the sign to the target audience. Relevantly, the High Court stated (with our emphasis); "It is the "ordinary signification" of the word, in Australia, to persons who will purchase, consume or trade in the goods which permits a conclusion to be drawn as to whether the word contains a "direct reference" to the relevant goods (prima facie not registrable) or makes a "covert and skilful allusion" to the relevant goods (prima facie registrable). When the "other traders" test from Du Cros is applied to a word..., the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods. The test does not encompass the desire of other traders to use words which in relation to the goods are allusive..." This statement is crucial to the High Court's reasoning and clarification on the law. It is also a fundamental departure from the statement in Wyeth ("Submissions to the effect that the Trade Mark is not directly descriptive of the specified goods and services, or that it is not in common use, do not assist the Applicant."). Contrary to that statement in Wyeth, submitting that 1-CLICK CLUSTERS does not make a "direct reference" to the applied-for services largely (if not completely) answers the question of whether the mark is prima facie distinctive under section 41. Indeed, even under the second step, the test refers to the legitimate desire of other traders to use a word which is "directly descriptive" in respect of similar services. Accordingly, on any view, Wyeth does not accurately reflect the current law on inherent distinctiveness in Australia.

e) e) Our searches on Jade reveal that Wyeth has not been cited with approval or otherwise in any subsequent decision at the ATMO, the Federal Court of Australia, or in any appellate court. This is unsurprising, given that Cantarella was decided the following year.

1. The examiner's third report maintained the s 41(4) objection. The Holder requested to be heard by way of written submissions as provided for by reg 17A.17(2)(d). Once the hearing was set down the Holder filed additional written submissions by its legal representatives, Clayton Utz.
2. I heard this matter as a delegate of the Registrar of Trade Marks on 7 November 2025. I make this decision based on the aforementioned materials and submissions made on behalf of the Holder.
3. As a preliminary matter, I note that the application is subject to a presumption of registrability under  reg 17A.24. As such, if I am not satisfied on the balance of probabilities that a ground for rejection exists, I must accept the application. I must also consider afresh the grounds for rejection under s 41 maintained by the Examiner and I am not bound by the Examiner's findings. Whilst I may consider reasoning provided by the Examiner in support of the objections, ultimately I must make a decision based on my interpretation of the facts and law.

1. Section 41 of the Act relevantly provides:

41 Trade mark not distinguishing applicant's goods or services

(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant's goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.

(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.

(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.

(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and

(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:

(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;

(ii) the use, or intended use, of the trade mark by the applicant;

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.

(5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.

1. As mentioned, a presumption of registrability is embodied in reg 17A.24 which provides that the Registrar must accept an IRDA unless satisfied that there are grounds for rejecting it (thereby placing the onus for proving the ground upon the Registrar, rather than placing the onus to prove registrability upon the Holder). Accordingly, if I consider the Trade Mark to have some inherent adaptation to distinguish the Holder's Services, I am not entitled to reject it unless satisfied that the combined effect of its inherent adaptation to distinguish, any past or intended use of it, and any other circumstances, has not or will not render the Trade Mark distinctive or capable of distinguishing.

1. The starting point for the assessment under s 41 is a consideration of the inherent adaptation of the Trade Mark to distinguish the Holder's Services from those of other traders. This is to be tested:

by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated by only 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[7]

1. This test was cited with approval in Cantarella_._[8] In that case their Honours describe a two-step process of consideration. Firstly, I must identify the signification which the word ordinarily possesses (ordinary signification) to persons who will purchase, consume, or trade in the goods. Then having regard to the ordinary signification, I must determine whether other traders might legitimately need to use the words for their ordinary meaning in respect of their own similar goods and services.
2. The ground for rejection as stated by the examiner is that the Trade Mark has limited inherent adaptation to distinguish the Holder's Services as the expression 1-CLICK CLUSTERS indicates that the Holder provides software and computer services which include the deployment of server clusters upon the request of a user with a single mouse click. I note that the word 'CLUSTERS' when applied to software and computing describes a kind of distributed computing ie. a type of computing that links computers/servers together on a network to perform a computational task, increase computational power and function as a single computer/server.
3. In considering the first limb of the test regarding the ordinary signification, the Holder submitted that the Trade Mark was inherently adapted to distinguish the Holder's Services and should be accepted. The Holder argued that the case before me is analogous to the TUB HAPPY case, and that the Holder's Services cover many services that cannot be described as server cluster deployment services. I am not persuaded by this reasoning. The TUB HAPPY case[9] which 'described the test for a word having 'direct reference to the character or quality of the goods' as lying 'in the probability of ordinary persons understanding the words, in their application to the goods, as describing or indicating or calling to mind either their nature or some attribute they possess'. His Honour considered 'TUB HAPPY' to be allusive such that it did not convey a meaning or idea 'sufficiently tangible' to amount to a 'direct reference' to the character or quality of the goods".[10]
4. The case before me is not analogous to the TUB HAPPY case. The Trade Mark is for the words '1-CLICK CLUSTERS'. While the Holder's Services are broad and notionally include a number of services which may not be related to server/computer cluster services, the Holder's Services do include infrastructure, technology, software and hosting services which feature server/computer clusters. By analogy, a party would not be permitted to register BANANA in respect of foodstuffs, as notwithstanding that the goods claimed are broad, BANANA is obviously descriptive of a subset of foodstuffs, namely bananas.
5. I am satisfied that the word 'CLUSTERS' is descriptive of a subset of the Holder's Services and that the addition of the expression '1-CLICK' indicates the expedient manner in which a service or transaction is engaged such as through the use of a computer with a single mouse/button click. The Trade Mark is neither covert or allusory, nor fanciful.
6. The Applicant argued:

Regarding ordinary signification, there is no such thing as "1-CLICK CLUSTERS" in common parlance. The Holder submits that, at most, the sign alludes to services that allow consumers to do "something" in connection with clusters (which is itself a broad term with multiple possible meanings). However, one cannot know what kind of cluster the services pertain to (i.e. this conclusion could only be reached by reviewing the actual manner in which the Holder uses the trade mark). Moreover, the 1-CLICK element creates even more uncertainty as to what the services actually are. It could refer to a 1-click "deploy", a "1-click' CloudFormation, or various meanings. In other words, it is not obvious what the ordinary signification of 1-CLICK CLUSTERS is unless the type of cluster is named and the platform clearly states what will be created, configured, and/or deployed. Crucially, however, it is not apparent from the mark itself what the services are, what back-end services are provided, what the technical services are, what are the associated software as a service offerings and how this overlays with the other machine learning and AI capabilities. It is entirely dependent on what the Holder offers, which could vary depending on the promotional offer provided to customers and their particular business needs.

By way of illustrative example, in Entain Group Pty Ltd [2024] ATMO 187, the Hearing Officer found that the target audience for gambling services would have the general understanding that QUADDIE COVER indicates that the services are, or are conducted in relation to, a COVER bet for QUADDIES (i.e. the ordinary signification is to indicate a product or service that will permit bettors to get their stake back (or some other promotional offering) if their selection doesn't win but meets certain other criteria for their quaddie bet). However, the Hearing Officer concluded that, taking into account the presumption of registrability, it is not apparent what this means as exactly what stake the bettors get back is dependent on what the owner offers by way of this service and may be subject to change based on promotional offers. Accordingly, the Hearing Officer was satisfied that the meaning of QUADDIE COVER is analogous to TUB HAPPY as it is metaphorical, covert, or allusory because it does not carry a direct and clear explanation of the purpose of the services.

Applying these principles, the target audience seeing the sign 1-CLICK CLUSTERS would have the general understanding that the services relate to clusters, that there's an efficiency element, and be curious as to what the relevant services offered might be, but cannot instantly know the purpose or commercial utility of the IaaS services. This is a classic marketing role of a trade mark - to encourage consumers of the target audience to conduct an emotive mental search of the potential services that may be offered. Even where there might be a mere suggestive reference to those services, it is indirect and allusive. Just as "QUADDIE COVER" and "TUB HAPPY" alluded to (but did not directly describe) the betting services and cotton goods of concern, "1-CLICK CLUSTERS" could only allude to (but not directly describe) the IaaS services. That is, the ordinary signification of the sign itself is allusive.

1. I disagree. The Holder's submission that the ordinary signification of 1-CLICK CLUSTERS is not obvious unless the type of cluster is identified and the platform clearly states what will be created, configured, and/or deployed fails to take into account that there is a continuum of distinctiveness for trade marks. This is reflected in the Act itself and observed in several court decisions, notably Moroccanoil Israel Ltd v Aldi Foods Pty Ltd[11] wherein the following passage is cited:

Just as the distinction between descriptive and fancy names is not a distinction of law so too it is wrong to see the distinction in black and white terms. The reality is that there is a continuum with at the extremes purely descriptive names at the one end, completely invented names at the other and in between names that contain ordinary English words that are in some way or other at least partly descriptive.[12]

1. Each trade mark must be assessed on its own merits. I consider that the Trade Mark lies between the two extremes. As as the ordinary signification of 1-CLICK CLUSTERS is apt to describe, in general terms, a broad range of computer services, its meaning is directly applicable to different platforms and various types of clusters, including the sort that would fall within the Holder's Services.
2. The absence of any reference to a specific type of cluster does not detract from the ordinary meaning which would be readily understood by consumers of the Holder's Services. The general Australian consumer of the Holder's Services would understand the Trade Mark as indicating that they include access or deployment of a network of interconnected computers or servers that work together as a unified system through a simple and easy one click of a mouse/button. In coming to this decision I take guidance from Sports Warehouse, Inc v Fry Consulting Pty Ltd[13] where Kenny J stated:

One can place too much weight on dictionary definitions. Whilst they provide a guide to the meaning of a word, they may not set out its meaning exhaustively. Colloquial usage may provide further meanings to those set down in the dictionaries.

1. While dictionaries may not have a direct definition for '1-CLICK CLUSTERS', and the Holder has argued that the consumer does not know all the specifics of the software/platforms/systems that are employed by the Holder, I consider that the reasoning in Sports Warehouse applies here. It is not difficult to understand and derive meaning from the expression, 1-CLICK CLUSTERS particularly for consumers who are looking for services that involve computer clusters.
2. I now turn to the second limb of the test namely whether because of the ordinary signification of the Trade Mark, other traders are likely to desire to use the mark, or some mark so nearly resembling it, for their similar goods or services. In Aldi Foods Pty Ltd v Moroccanoil Israel Ltd, Perram J (with whom Allsop CJ and Markovic J agreed), said:

Further, 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. Furthermore, account must be taken of the fact that no attempt has been made in this case to limit the mark by stylistic or device elements; it is purely a word. As Yates J explained in Apple at 517 [18] that matters because it means that if the word proceeds to registration it will give the Respondent a monopoly on the use of the word (or words) in whatever form they may be ultimately rendered. [14]

1. Given my discussion of the ordinary signification of the Trade Mark, it is not difficult to imagine that other traders who deal in simple and easy '1-click' access or deployment of computer/server clusters would want to use similar expressions to describe their similar goods and services.
2. Accordingly, in my estimation the Trade Mark falls within the category of trade marks that are to some extent, but not sufficiently, inherently adapted to distinguish the Holder's Services from the services of other persons, contemplated in s 41(4).
3. A ground for rejection under s 41(4) need not be fatal to the application, I must also be satisfied that the Trade Mark does not and will not distinguish the Holder's Services as being those of the Holder having regard to the factors set out in s 41(4)(b). However, in the absence of the Holder filing any evidence of use, intended use and any other circumstances that may be relevant, the s 41(4) ground for rejection stands.

Section 41(4) and the Holder's Services

1. In Apple Inc. v Registrar of Trade Marks[15] Justice Yates stated:

My finding that the application for registration of APP STORE for the designated services in Class 35 must be rejected determines the fate of the application as a whole. This is because there are no separate applications for registration of the mark for the designated services Classes 38 and 42. There is but one application covering registration of the mark for all the services that have been specified. If the application fails in one respect, it fails as a whole. In these circumstances, is not necessary for me to proceed to determine the registrability of APP STORE for the designated services in Class 38 or Class 42.

1. The Holder has not requested an amendment to the Holder's Services and noting that the Holder appears to provide its services in respect of software and computer services for the deployment of server clusters there appears to be no useful amendment that can be made to the Holder's Services.
2. I am satisfied that a s 41(4) ground for rejection exists for the entirety of the IRDA.

1. Regulation 17A.24 provides:

(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.

1. I have found that a ground for rejection of the Trade Mark exists under s 41. Accordingly, I refuse extension of protection of IRDA 2536666. The International Bureau will be informed of the decision.

[1] Unless otherwise indicated, any references to sections or regulations, below, are references to sections or regulations of the Trade Marks Act 1995 (Cth) ('Act') or the Trade Marks Regulations 1995 (Cth) ('Regulations'), respectively.

[2] [2014] HCA 48 (French CJ, Hayne, Crennan, Keifel and Gageler JJ).

[5] FH Faulding & Co Ltd v Imperial Chemicals Industries of Australia and New Zealand Ltd [1965] HCA 72; (1965) 112 CLR 537 (Kitto J).

[6] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).

[7] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).

[8] [2014] HCA 48 (French CJ, Hayne, Crennan, Keifel and Gageler JJ).

[9] Mark Foy's Ltd v Davies Coop & Co Ltd [1956] HCA 41 (Williams J).

[10] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 [52] (French CJ, Hayne, Crennan and Kiefel JJ).

[11] [2017] FCA 823, [638] (Katzmann J).

[12] Equity Access Pty Ltd v Westpac Banking Corp [1989] FCA 506, [71] (Hill J).

[13] [2010] FCA 664 [86] (Kenny J) ('Sports Warehouse').

[14] [2018] FCAFC 93, [125].

[15] [2014] FCA 1304 [232] (Yates, J.).