The implications of these matters for word marks were spelled out by Yates J in Apple where his Honour concluded that APP STORE was not inherently adapted to distinguish Apple's App Store because other traders might legitimately wish to call the trade channels by which they sold small software applications app stores. At 515 [11] his Honour noted that the s 41(3) inquiry was one made examining only the word itself and divorced from the effects, or likely effects, of registration. Where a mark consists of words, his Honour observed, 'attention is directed to whether these words are taken from the common stock of the language and, if so, the degree to which those words are, in their ordinary use, descriptive of the goods or services for which registration is sought, and would be used for that purpose by others seeking to supply or provide, without improper motive, such goods or services in the course of trade'. I respectfully agree with his Honour's lucid summary of Clark.[18]

1. The word 'DocBags' consists of two elements being 'Doc-' and '-Bags'. The relevant services here are for the 'delivery of emergency supplies of medicines to medical practices including PBS medicines', as well as 'pharmacy dispensary services'. Broadly, these services are both forms of medical and/or pharmaceutical delivery or dispensary services and have a close relationship with medical contexts.
2. Ultimately, I must decide what, if any, is the ordinary signification of the trade mark. I accept that the word element 'doc' is often used a short form of the word 'doctor' in the context of the Designated Services. I also accept that the word 'DocBags' would be considered by consumers as referring to 'doctor's bags' or 'doctor bags'.
3. Mostafa at Exhibit MM-23 shows what I consider to be use of the words 'Doctor's Bags' in a manner which refers to the characteristic of the Designated Services on offer. I extract an example of this below:

1. Another screen capture shows a testimonial of Margarat Clee Road Street Medical Clinic, the text of which reads, 'Thanks for the doctors bag with the gift inside, so nice of you. I can't believe it was here today. Thanks for your help'.[20]
2. In a description contained in a screen capture of the Applicant's Website the following text appears:

We are the biggest supplier of emergency PBS medications to medical practices across Australia. Our commitment to provide swift, reliance overnight delivery for orders placed before 4pm AEST, which most importantly is free of charge! Specialising in the Doctor's Bag we maintain substantial stock levels, ensuring consistent supply even during stock shortages, making certain you always have access to your urgent medications. Beyond the Doctor's Bags List, we extend special pricing for a variety of additional medications that may be essential for your practitioners.[21]

1. A screen capture also appears in Mostafa-2 of the Applicant's Website which contains a table above which there is the tile, 'Current List of Doctors Bag Medication'.[22] I consider this to evidence that the words 'Doctors Bag' are likely not adapted to distinguish and objectively appear as being a reference to the nature or characteristics of the Designated Services. Mostafa itself also even appears to acknowledge that the words 'Doctor's Bag' is a term of which other persons may desire to use.[23] Regardless, the Applicant's own evidence weighs in favour of there being a meaning in the area of the Designated Services for the words 'Doctor's Bag'.
2. In Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd Dixon J found that although the word 'ROHOE' was not a commonly used way to refer to a 'rotary hoe' or that it was commonly shortened in such a manner, the word 'ROHOE' would still be considered by consumers to be an abbreviation of the name of the designated goods.[24] I consider the lack of spacing or a hyphen between the 'Doc-' and '-Bag' elements to be of little to no impact for the purposes of the word having ordinary signification. The word 'DocBags' has an ordinary signification which refers to a bag which in part relates to doctors - ie a 'doctor's bag'. This clearly is subject matter amounting to a characteristic of the Designated Services. The dispensary or delivery services being for delivery or dispensing of those goods.
3. Patients are not the only consumers of the Designated Services. For example, the Designated Services in class 39 refer specifically to 'medical centres'. An additional and separate basis for a likely ordinary signification is that 'DocBags' would, for some consumers, refer to one form of prescriber bags. Fortifying this conclusion is that a doctor is a clear and well known example of a prescriber for the relevant purposes. The Designated Services in class 39 are targeted at medical centres and their staff who are likely to be acquainted with the PBS system including the prescriber bag system. I am satisfied, for example, that a doctor calling on a supplier of the Designated Services or an assistant working on their behalf, being either delivery or dispensary services, and asking for delivery or dispensing of a 'doc bag', 'doctor bag' or 'doctor's bag', would readily be understood as referring in a more causal manner to an order for emergency medications.
4. I have taken account of the Third Party Declarations in deciding whether there is an ordinary signification. These do not weigh greatly on the matter as none of these specifically mention the word 'DocBags' as being a word they view as a trade source and none expressly contradict or cast any doubt on my finding that there is an ordinary signification in this word. I have noted that the Third Party Declarations all mention that in the process of obtaining emergency supplies persons must fill out something called a 'prescriber bag form'. However, this does not rule out other words, including 'DocBags' as having a similar and more causal ordinary signification. Nor do the Third Party Declarations rule out 'DocBags' as being a word meaning 'Doctor's Bags' or 'Doctor Bags'. I do not consider the formulaic declarations to weight greatly on the question of there being an ordinary signification or the likelihood of traders in services similar to the Designated Services as desiring use of the word 'DocBags' or something nearly resembling that.
5. The Applicant correctly submits that what I must consider is not whether 'Doctor's Bag' has an ordinary signification, but whether 'DocBags' has an ordinary signification. I am satisfied that 2374634 has an ordinary signification which has the same meaning. The word 'DocBags' also nearly resemble the words 'doctor's bag' or 'doctor bag' and amount to a readily perceived short form of that. My assessment is that this is not a skilful or covert allusion to the Designated Services.[25] The shortening of the word 'doctor' to 'doc-' for these particular Designated Services clearly does not detract from the meaning which would be readily understood, especially by medical centres and other traders. I am also satisfied that other traders would likely legitimately desire use of these words, or words nearly resembling them, when offering similar services. That is, they will think of the word and want to use it in connection with similar services in a manner which would infringe a registered trade mark granted in respect of it.
6. After assessment of 2374634 and the evidence insofar as it weighs on the matter, I consider 2374634 to have little if any inherent adaptation to distinguish. I also consider it likely that other traders would desire to use 2374634 for the sake of the ordinary signification. I find that 2374634 has no inherent adaptation to distinguish and from here should consider the evidence of the Applicant's use.

1. Given my findings above, I must consider the Applicant's use of 237434 and whether at its filing date, 2374634 did in fact distinguish the Designated Services.[26]
2. Mostafa-2 declares use since at least 2014, much of this use appears in the context of a use alongside 2353552 which I have found below to be inherently adapted to distinguish the Designated Services. Many documents in Exhibits MM-15 to MM-23 also appear to make use of the words 'Doc Bag Express'. The Exhibits to Mostafa-2 also include what are known as 'prescriber bag' forms. These forms are used to order emergency supplies of pharmaceutical goods under the PBS. Under the field titled 'name of approved pharmacist dispensing goods' often appears the words 'Doc Bag Express'. These date from 2015 to 2023 and various types of medicine which would be used in emergency situations are listed as having been ordered. One example of the order forms is dated 2 September 2016 which indicates the 'company' as being 'Doc Bag Express' and the 'subject' as being 'Doctors Bag orders'.[27] Many of the facsimile cover sheets for the order forms mention either 'emergency supplies', 'practice stock' or other specified emergency medications such as adrenaline injections or Ventolin inhalers. I note that some of the prescriber bag order forms in evidence do not show the use of the word 'DocBags' and show use of 'DocBag Express' as the 'name of approved Pharmacy dispensing this order' or prescriber at the signature portion of the form. In almost every case the details of the customers on the prescribing forms are redacted. As such, I am unable to verify the number and spread of customers who have been engaged.
3. The Applicant has elected not to provide turnover or sales figures. Therefore, there is nothing in evidence which indicates the total turnover for the Designated Services offered and sold by reference to 2374634. Accordingly, it is difficult to measure the level of trade in the context of the industry for the Designated Services. Whilst the declared advertising figures have been moderately sizeable, I do not consider it to be such that 2374634 would at the filing date distinguish the Designated Services. I also note that there is little in the EIA which shows specific examples of activities which resulted from this expenditure, and which feature 2374634 rather than 2353552 prominently displayed or promoted.
4. I recognise that declarations such as the Third Party Declarations can be relevant in determining whether the use of a trade mark in fact distinguishes goods and services. Surveys have also at times formed evidence of recognition of a trade mark by third parties as an indicator of trade origin but even survey evidence which has demonstrated sizeable sections of the population may sometimes still fail to demonstrate the relevant recognition such that a trade mark is distinctive.
5. In Chocolaterie Guylian NV v Registrar of Trade Marks, Sundberg J observed that:

... cases confirm that association evidence on its own does not prove distinctiveness; the evidence must establish that the public has been educated to understand the sign as an identifier of the origin of the goods.[28]

1. In this matter, the Third Party Declarations are formulaic and present as forms which appear to have been distributed for signature. I also note that the contents of the Third Party Declarations all have a focus on the words 'Doc Bag Express' and these words appear as administrative on the forms, or as a business name. The Third Party Declarations at best show a few persons which have business relationships with the Applicant making statements which may refer to 2353552 rather than 2374634. The Third Party Declarations individually and together do not represent a consistent recognition of 2374634 by the broad consuming public or that the consuming public have been educated that 2374634 itself amounts to a badge of origin. I give the Third Party Declarations little weight in determining the matter concerning 2374634. I also note that the few examples of alleged confusion provide little context beyond the statements where these matters are alleged and these are of similar effect.
2. After careful consideration for the evidence, I am satisfied that 2374634 did not in fact distinguish the Designated Services at the filing date for 2374634.
3. I also note that even if I assume that 2374634 has some though not sufficient adaptation to distinguish, in the way asserted by the Applicant, I am also satisfied that noting the extent of the Applicant's use, the level of inherent adaptation of 2374634 asserted by the Applicant, and other relevant circumstances, 2374634 does not and will not distinguish the Designated Services.
4. Accordingly, the ground of opposition in respect of 2374634 under s 41 has been established.

1. The SGP in respect of 2353552 states the following:

1. The Mark is not capable of distinguishing the services of the Application, from the goods or services of other persons - section 41 of the Act.

Particulars - The term 'DOC BAG' is a commonly abbreviated term to describe a doctor's bag or a prescriber bag used to carry medical or pharmaceutical supplies in the course of a trader providing, delivering or transporting medical or pharmaceutical services. The term 'EXPRESS' is also commonly known as 'fast' or 'rapid'. Accordingly, DOC BAG EXPRESS explains a service in which medical or prescriber bags are delivered by a special service to ensure speed in an emergency.

Other traders, without improper motive, would desire to use the Mark or a similar mark, in the ordinary course of trade in respect of similar services or closely related goods to those of the Application. Accordingly, the Mark is not capable of distinguishing the services in respect of the Application.

1. Of relevance are the comments of Dodds-Streeton J in Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2):

It is established that a combination mark may be capable of distinguishing by the overall impression it creates, even if the individual elements in isolation lack any such capacity, because, for example, they are commonplace in a trade, or, by parity of reasoning, merely or highly descriptive. When assessing whether a combination trade mark such as the Fry trade mark is adapted to distinguish, it is necessary to consider the combination as a total composition, rather than the individual constituent elements in isolation.[29]

1. Present in 2353552 are the words 'DOCBAG EXPRESS'. I note my findings regarding the word 'DocBags'. The word 'express' in 2353552 refers to the expeditious provision of the Designated Services and does not add much to this combination. However, I also note the additional visual device element of a depiction of an individual rushing towards the right and carrying what appears to be a bag marked with a cross element. This visual device element in 2353552 is prominent and distinctive.
2. The evidence and Opponent's Written Submissions do not persuade me that other traders would honestly desire to use the combination of elements forming 2353552 for the sake of its ordinary signification in relation to their own similar services, or something so nearly resembling 2353552. The total combination of the device and word elements have sufficient inherent adaptation to distinguish the Designated Services.
3. Accordingly, the ground of opposition under s 41 is not established in respect of 2353552.

(1) Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

(b) to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

having regard to the extent (if any) to which any ground on which the application was opposed has been established.

1. I am not satisfied that the ground of opposition under s 41 has been established in respect of 2353552. Accordingly, trade mark number 2353552 may proceed to registration.
2. I am satisfied that the ground of opposition under s 41 has been established in respect of 2374634. Accordingly, I refuse registration of trade mark number 2374634.
3. If the Registrar is served with a notice of appeal, I direct that registration of 2353552 shall not occur until the appeal has been decided or discontinued. The disposition of both of Trade Marks should be in accordance with the Court's order or direction in the event of an appeal.

1. Both parties have requested their costs. Whilst it is normal for costs to follow the event, both parties had a measure of success and I decline to make an award of costs.

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

[2] The word 'PBS' refers to the 'Pharmaceutical Benefits Scheme'.

[3] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[4] Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelman JJ).

[11] Elite Fitness LC Pty Ltd v Velvet Publications Pty Ltd [2025] ATMO 49 2025 ATMO 49, [9] (Hearing Officer Makrigiorgos).

[12] Section 41(3).

[13] Section 41(4).

[14] [1964] HCA 55; (1964) 111 CLR 511, 514 cited with approval in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48, [26] (French CJ, Hayne, Crennan and Kiefel JJ) ('Cantarella').

[16] Applicant's Written Submissions, [13].

[17] NAS Communications Pty Ltd v 1300 Directory Pty Ltd [2006] ATMO 93 (Hearing Officer Nancarrow) and Multiplex Ltd v Eastcoast Holdings Pty Ltd [2005] ATMO 39 (Hearing Officer McDonagh).

[18] [2018] FCAFC 93, [125]-[126] (Perram J) (with my emphasis). See also_, Progressive Green Pty Ltd v Flo Energy Pty Ltd_ [2025] FCA 1315, [157]-[158] and [381] (Bennett J).

[24] [1946] HCA 15; (1946) 72 CLR 175, 183-185. See also, [186] (McTiernan J).

[25] Mark Foy's Ltd v Davies Coop & Co Ltd [1956] HCA 41; 95 CLR 190.

[26] Section 41(3).

[27] Exhibit MM-5, 32. See also, MM-6, 48 and 53.

[28] [2009] FCA 891, [100]. See also, Woolworths Ltd v BP plc (No 2) [2006] FCAFC 132 (Heerey, Allsop and Young JJ) and Unilever's Application [2003] EWHC 2709; [2003] RPC 35 (Jacob J).

[29] [2012] FCA 81, [61].