Pact Earth Ltd [2025] ATMO 68 (11 April 2025)

2025 ATMO 68

Trade Marks Act 1995 (Cth) - section 33 proceeding - ground for rejection under s 41(3) considered - trade mark has no inherent adaptation to distinguish - extension of protection refused for goods in classes 18 and 24 - extension of protection granted for class 1 goods

1. Pact Earth Ltd ('Holder') has sought the extension of protection of its International Registration 1750765 to Australia as detailed below:

Class 1: Organic compositions and substances for use in the textile industry; collagen for industrial purposes; proteins for use in the textile industry; collagen for use in the textile industry; chemicals for use in the textile industry; organic materials used as raw ingredients in the manufacture of textiles; organic compositions and substances for use in the manufacture of textiles; plant-based fibres used as a raw ingredient in the manufacture of textiles; collagen used as a raw ingredient in the manufacture of textiles; enzymes for use in the textile industry; reducing agents for the textile industry; collagen used as a raw ingredient in treating, dying, impregnating, waterproofing and brightening textiles; plant-based fibres used as a raw ingredient in in treating, dying, impregnating, waterproofing and brightening textiles; organic compositions and substances for manufacturing, treating, dying, impregnating, waterproofing and brightening textiles; chemicals for treating, dying, impregnating, waterproofing and brightening textiles; chemicals for use in the textile industry; chemicals for use in the manufacture of textiles; adhesives for use in the textile industry; adhesives for use in the manufacture of textiles.

Class 18: Bags; handbags; tote bags; luggage; travelling bags; suitcases; backpacks; purses; wallets; rucksacks; bum bags; holdalls; all of the aforesaid goods being made from a collagen-based biomaterial; imitation leather.

Class 24: Textiles; fabric; textile materials; textile fabrics; cloth; fabrics of organic fibres; household textiles; lining fabrics; waterproof fabrics; apparel fabrics; dressmaking fabrics; curtain fabrics; coated fabrics; knitted fabrics; woven fabrics; non-woven fabrics; furnishing and upholstery fabrics; textile fabrics for use in manufacture; textile fabrics for use in the manufacture of clothing; fabrics for use in the manufacture of hats; fabrics for use in the manufacture of footwear; fabrics for use in the manufacture of bags; fabrics for use in the manufacture of wallets; fabrics for use in the manufacture of purses; non-woven fabrics of natural fibres; fabrics for use in the manufacture of household textile articles.

1. The IRDA was examined under s 33 of the Trade Marks Act 1995 (Cth)[2] and a Notice of Provisional Refusal issued raising grounds for rejection under s 41(4) with respect to the class 1 goods and s 41(3) with respect to the goods in classes 18 and 24. The Examiner objected that the Trade Mark is not to any extent inherently adapted to distinguish the goods in classes 18 and 24 and is to some extent, but not sufficiently, inherently adapted to distinguish the class 1 goods because the Trade Mark indicates that the goods are oval shaped, or 'that they are otherwise used upon or in connection with the manufacture or (sic) oval shaped textiles or finished products'. Accordingly, other traders should be able to use the Trade Mark, or a mark so nearly resembling it, for their similar goods.
2. Following the filing of submissions by the Holder, the Examiner withdrew the objection relating to the Class 1 goods but maintained the ground for rejection under s 41(3) for classes 18 and 24. In response, the Holder requested a hearing on the ground for rejection.
3. I heard this matter as a delegate of the Registrar of Trade Marks on 1 April 2024 via video conference. The Holder was represented at the hearing by Shehana Wijesena, assisted by Sanya Bhatnagar, both of Bird & Bird. Prior to the hearing, the Holder's attorneys filed a written summary of submissions. I make this decision based on the aforementioned materials and submissions made on behalf of the Holder.
4. As a preliminary matter, I note that the application is subject to a presumption of registrability under s 33. 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 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.

Note: For goods of a person and services of a person see section 6.

(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.

1. The Holder summarised the Examiner's s 41(3) objection as follows:

a) the ordinary meaning of OVAL is clear by reference to its various dictionary definitions, namely that the word would ordinarily by considered to describe or otherwise refer descriptively to a shape; > > b) the manner in which the word OVAL is normally used in relation to similar goods would appear to indicate that such use is direct in meaning and in the manner it is used to refer to goods, typically to refer to the shape of the goods, or to refer to other descriptive characteristics, such as oval shaped patterns; > > c) a non-exhaustive list of URLs show that traders of bags and household textiles are using the term 'OVAL' to describe their products that are oval in shape or comprise of oval shaped patterns or designs; > > d) while consumers faced with the word OVAL will not naturally or immediately assume that the goods are oval shaped, this is not the correct test for distinctiveness. The target audience needs to be considered (i.e., anyone, consuming, purchasing, or indeed, trading in the relevant goods). Consideration must also be given to whether other traders are likely to need or desire to use the word OVAL upon or in connection with the same or similar goods for its ordinary meaning. The examiner considers that there is a likelihood that this would be the case; > > e) while the test does not consider innocent or non-infringing use, this is not a correct assessment. When considering the capacity for a trade mark to distinguish goods in the first place, innocent or direct use is a primary consideration, and one that asks us to consider it from the perspective of whether or not a mark would be considered distinctive apart from the effects of registration, which of itself is a different argument to one that considers whether or not innocent use would not 'necessarily deprive a shape of being inherently adapted to distinguish', which when characterised in this way is a reversal of the correct order in which we are to consider the word OVAL with respect to the manner in which it either is, or is not (or is or is not 'likely', on the balance of probabilities) to distinguish goods.

f) the examiner refers to the test set out in Registrar of Trade Marks v W. and G. Du Cros Ltd[3] namely:

The applicant's chance of success in this respect (ie. in distinguishing his goods by means of the mark, apart from the effects of registration) must, I think, largely depend 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 own goods.

1. The Holder argues that the above assessment is incorrect because:
   1. the ordinary meaning of the word "oval" has no direct reference to the Holder's goods in classes 18 and 24;
   2. at best the Trade Mark makes an allusive reference to some characteristic or quality of some of the claimed goods and hence the Trade Mark is prima facie registrable;
   3. the examiner's assessment of the other trader's test is inconsistent with the relevant authorities. The actual test is whether another trader will think of the mark 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;
   4. this test does not contemplate any non-infringing use such as the use raised in the further adverse report; and
   5. use of the word "oval" to indicate the shape of a product by another trader is not an infringing use for the purposes of the test set out in the relevant authorities.
2. The inherent adaptation of a trade mark is assessed:

[B]y 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 connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[4]

1. Determining the inherent adaptation of a trade mark to distinguish is a two-step process.[5] 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. In Urban Alley Brewery Pty Ltd v La Sirène Pty Ltd, the Full Federal Court said:

In trade mark law, a finding that a "word" mark is not to any extent inherently adapted to distinguish a trader's goods from the goods of others means that the word, in relation to those goods, serves a purely descriptive function. The rationale for not allowing such words to be registered as trade marks is that the registration would result in an appropriation of the common stock of language that all should be free to use for its ordinary meaning.[6]

1. 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. [7]

1. The Trade Mark consists of the word 'OVAL' which is a common English word that is generally understood amongst Australians as meaning something 'having the general form, shape or outline of an egg; egg-shaped'[8] or a sports field[9] (which is clearly not relevant to the present goods).
2. The Holder argues that the meaning 'having the general form, shape or outline of an egg; egg-shaped' is not directly descriptive of the goods. The Holder has not identified any other meaning but rather submits that the ordinary meaning identified is not a direct description of the goods. The Holder contends, for example, that the directly descriptive term for 'bags' would be 'bags'. Whilst this is true, it does not mean that there are not other directly descriptive terms related to bags. In particular, the Holder's argument ignores Note 1 of s 41 which provides that a mark has no inherent adaptation to distinguish if the mark consists wholly of a sign 'ordinary used to indicate... some other characteristic, of goods'. The ordinary meaning of the word OVAL has direct application to the goods such as imitation leather and fabrics as indicating such goods with an oval pattern or that can be used to manufacture oval-shaped goods and otherwise indicates that the claimed goods are oval in shape. Examples of other marks that have been found to be directly descriptive of a characteristic of the claimed goods include EUTECTIC for welding materials because it means melting at low temperature or melting readily[10] and WHOPPER which was found to be directly descriptive of the size and nature of the hamburgers claimed.[11] Although these cases were decided under previous legislation they are still relevant. More recent examples include MOBILE SKIPS which was found to be directly descriptive of a skip bin that is readily movable[12] or RED (in a particular font) for class 9 goods which would be understood as indicating goods that are red in colour.[13]
3. In this case, the Trade Mark consists wholly of the word OVAL which I am satisfied has an ordinary meaning of indicating that the claimed goods have the general form, shape or pattern of an egg. Hence, the ordinary signification of the mark is directly descriptive of bags and textiles that are oval-shaped or printed, embossed or otherwise decorated with an oval pattern.
4. 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. The Applicant refers to this as the 'Other Traders Test' and I will also adopt this phrase.
5. The Holder points to a number of cases in support of its argument that descriptive or non-infringing use is not relevant to the Other Traders Test. For example, in Chocolaterie Guylian N.V. v Registrar of Trade Marks ('Guylian') Sundberg J said:

It would be wrong, said the Registrar, to construe the test (in Clarke) as being whether or not other traders might wish to use the mark or a similar mark "in an infringing way", in other words as a trade mark for themselves. Instead, the test should be understood as whether other traders might wish to use the mark or one resembling it of the sake of the signification of the mark itself and not necessarily to denote trade origin. However, in Clark Kitto J quite clearly referred to use "in any manner which would infringe a registered trade mark granted in respect of [the relevant word or shape]. I agree with Lindgren J in Kenman Kandy [2002] FCAFC 273; 122 FCR 494 at [95] that the Clark test does not go so far that any kind of innocent use at all, including innocent non-trademark use, would necessarily deprive a shape of being inherently adapted to distinguish.[14]

1. In addition, the Holder notes that the examples relied on by the Examiner in maintaining the s 41(3) objection in the second refusal all demonstrate non-infringing, descriptive use of the term 'oval'. Whilst I agree with the Holder that some of these instances are descriptive uses of 'oval', others are, in my view, using OVAL as a trade mark. For example, at www.bags.bymonty.com, the following uses appear:

1. I consider that each of the above uses of 'Oval' is use as a trade mark. In my view, OVAL is being used as a sub-brand of MONTY and the term 'Oval' is being used to identify a particular style of bags (which arguably are not 'oval' in shape). This is use of the term OVAL as a trade mark and is different to descriptive use where a bag is described as oval-shaped. In my view, this use is typical of the way in which traders are likely to wish to use the term OVAL. It is common for manufacturers of fabrics and bags to offer multiple product ranges in different styles, shapes and patterns, and I believe that such traders are likely to wish to use the term OVAL as a trade mark to indicate a product range or particular goods that are either oval in shape, have an oval pattern or for which the term oval has some reference to the goods. It is possible for a term to be used both as a trade mark and also in a descriptive way.[15] Hence, the term OVAL can be used by traders to describe oval shaped goods but also as a trade mark to indicate a particular product or product range of a particular trader. The fact that a descriptive word is used as a trade mark does not of itself make it registrable[16] but it can still be used to indicate the source or origin of the goods.
2. Furthermore, in relation to the Applicant's arguments that non-infringing or descriptive use is not relevant to the Other Traders Test, I heed Kitto J's additional comments in Clark:

...it seems to me impossible to conclude that there is no likelihood of other traders, in the ordinary course of their businesses and without any desire to get for themselves a benefit from the appellant's reputation, wishing in advertisements or otherwise to describe (e.g.) their power cranes from Michigan as Michigan power cranes. They may well wish by such means to take legitimate advantage of a reputation which they believe or hope that the State of Michigan possesses among Australians for the quality of its manufacturing products, and it would be contrary to fundamental principle to grant a registration which would have the effect of denying them the right to do so by using the name of the State. 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.[17]

1. Also, whilst Sundberg J in Guylian highlighted Kitto J's words in relation to infringement, Sundberg J considered that in the case before him, the seahorse shaped mark in question so lacked inherent adaptation to distinguish that other traders might inevitably risk infringing it if it were registered.[18]
2. Similarly in this case, it is no answer to say that even if the Trade Mark were registered, other traders would still be able to describe their goods as 'oval-shaped or oval-patterned'. Such a proposition approaches the question under s 41 from the wrong angle as inherent adaptation concerns the common right of the public to make honest use of words forming part of the common heritage.[19]
3. The Trade Mark before me consists of the word OVAL which is directly descriptive of a characteristic of the claimed goods. The descriptive nature of the word heightens the likelihood that other traders would legitimately desire to use the Trade Mark for the sake of its ordinary signification in the ordinary course of their business, or a mark so nearly resembling it, for their bags, fabrics and textiles in classes 18 and 24.
4. I am satisfied that the Trade Mark has no inherent adaptation to distinguish the Holder's Goods and in the absence of any evidence from the Holder that the mark did in fact distinguish its goods at the filing date, I find that a ground for rejection exists under s 41(3).

(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 2388553 for goods in classes 18 and 24. The International Bureau will be informed of the decision that protection is only extended in relation to the class 1 goods.
2. If the Registrar is served with a notice of appeal, I direct that protection shall not occur until the appeal has been decided or discontinued and that the disposition of the IRDA be in accordance with the Court's order or direction.

[1] Convention priority claimed: 27 January 2023 based on UK00003872056.

[2] 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.

[4] Clark Equipment Company v Registrar of Trade Marks [1964] HCA 55 ('Clark'), [5] (Kitto J).

[5] Cantarella Bros Pty Limited v Modena Trading Pty Limited [2014] HCA 48 ('Cantarella'), [71] (French CJ, Hayne, Crennan and Kiefel JJ).

[6] [2020] FCAFC 186, [51] (Middleton, Yates and Lee JJ).

[7] [2018] FCAFC 93, [125].

[8] Macquarie Dictionary (online at 3 April 2025) 'oval' (def 1).

[10] Euctectic Corporation v. Registrar of Trade Marks (1980) 32 ALR 211 (Rogers J).

[11] Burger King Corporation v Registrar of Trade Marks [1973] HCA 15 (Gibbs J).

[12] Mobile Skips (Australia) Pty Ltd [2022] ATMO 124 (Hearing Officer B. Knowles); Mobile Skips Australia Pty Ltd [2024] ATMO 180 (Hearing Officer N. Worth).

[13] Red.com, LLC [2022] ATMO 224 (Hearing Officer N. Smith).

[14] [2009] FCA 891, [80].

[15] Johnson & Johnson Australia Pty Ltd v Sterling Pharmaceuticals Pty Ltd [1991] FCA 402 (Lockhart, Burchett and Gummow JJ). See also, Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd [2023] HCA 8, [25] (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

[19] Also see the relevant comments in Sustainable Living Fabrics Pty Ltd v Instyle Contract Textiles Pty Ltd [2011] ATMO 66, [30] - [38] (Hearing Officer M. Kirov); Raymond Hoser [2017] ATMO 87, [12]-[18] (Hearing Officer H. Wilson); Insurance Australia Group Limited v AAI Limited [2023] ATMO 90, [28]-[30] (Hearing Officer B. Goldsworthy).