Upcodes Inc [2025] ATMO 225 (31 October 2025)

1. On 4 April 2024, UpCodes Inc ('Holder') applied for an extension of protection to Australia for international registration 1811735. This application is referred to as an International Registration Designating Australia ('IRDA'). Details of the IRDA are set out below:

Class 42: Providing non-downloadable software for assisting users with research on building codes, code compliance, and information relating to the design, construction, or occupancy of buildings ('Designated Services')

1. On 1 October 2024, the Holder was issued a Notification of Total Provisional Refusal outlining a ground for rejecting the Trade Mark under s 41(4) of the Trade Marks Act 1995 (Cth).[1]
2. The examiner found that the letters UP were a well-known acronym for urban planning, and that the Trade Mark, as a whole, signified that the Designated Services related to urban planning codes. Because of this descriptive meaning, other traders would have a legitimate desire to use the Trade Mark, or a sign so nearly resembling it, in relation to the Designated Services. Consequently, the Trade Mark was not prima facie capable of distinguishing the Designated Services from those of other traders.
3. On 12 May 2025, the Holder filed submissions addressing the ground for rejection. The Holder claimed that the Trade Mark was an invented word with no ordinary signification. Additionally, it proposed that if a consumer did see the Trade Mark as two conjoined words, the letters UP had a variety of meanings, and therefore consumers would not instantly know what the Designated Services were. As such, the Trade Mark was only suggestive. The Holder also drew the examiner's attention to a lack of similar objections in the European Union, the United States of America, the United Kingdom, and India when the Trade Mark was filed in those jurisdictions.
4. On 29 May 2025, the examiner issued correspondence disagreeing with the 'multiple meanings' argument, while also providing links to online resources in support of the contended meaning of the letters UP. The examiner maintained the ground for rejection.
5. On 26 July 2025, the Holder requested to be heard. In line with directions issued by this office on 30 July 2025, the Holder filed written submissions on 25 August 2025 together with supporting material.
6. This matter will be considered afresh, and I am not bound to follow the examiner's decision. My decision is also subject to the presumption of registrability, in that unless I am satisfied there are grounds for rejecting the IRDA or the IRDA has not been made in accordance with the Regulations, I must accept it.[2]

Section 41 - Trade Mark not distinguishing applicant's goods or services

1. Section 41 relevantly states:

(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;

1. In Clark Equipment Co v Registrar of Trade Marks,[3] Kitto J outlined that the question of whether a sign is inherently adapted to distinguish is:

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

1. In Cantarella Bros Pty Limited v Modena Trading Pty Limited ('Cantarella'),[4] the High Court structured the above question into two stages. The majority stated:

As shown by the authorities in this Court, the consideration of the "ordinary signification" of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has "direct" reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the "ordinary signification" of a word, English or foreign, is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods.[5]

1. Therefore, the first stage of the enquiry is to establish the ordinary signification of the sign in Australia to those concerned with the relevant goods or services. The second stage of the enquiry is to gauge whether other traders might be likely to desire to use the sign in respect of their own goods or services for the ordinary signification established in the first stage of the enquiry.

1. The Holder's written submissions set out that UPCODES is inherently adapted to distinguish the Designated Services because it is an invented word, is not in common parlance, and does not appear in the dictionary. It submits the Trade Mark provides, at most, an allusive reference to the Designated Services that 'requires consumers to conduct an emotive mental search of the potential services that may be offered'. The Holder states that as far as the second stage of the test outlined in Cantarella is concerned, there is no evidence of other traders using the Trade Mark for their own software services. It claims that the lack of a similar objection being raised in relation to its trade mark applications for UPCODES in international jurisdictions supports a finding of distinctiveness.
2. The Holder has provided additional material for my consideration including records of registration of the Trade Mark in the United States of America, protection notices from the European Union and the United Kingdom, and a notification of provisional refusal from India. The provisional refusal is not related to the distinctiveness of the Trade Mark. Examples of the Trade Mark's online usage were also provided.

1. The Designated Services use the word 'codes' and 'code' in a context where their normal meaning in English as 'rules or regulations' is self-evident. For this reason, when used in the context of the Designated Services, I expect consumers will see UPCODES as a conjunction of the words (or letters) UP and CODES, rather than as an invented word.
2. The issue turns on whether the letters UP in the Trade Mark would be taken to signify 'urban planning', such that a consumer would understand the Trade Mark, as a whole, to signify that the Designated Services relate to 'urban planning codes', meaning the rules and regulations relevant to urban planning.
3. While this matter is considered afresh, it is useful to consider the information which first led to the conclusion that this Trade Mark is not sufficiently inherently adapted to distinguish the Designated Services.
4. The examiner's finding that the letters UP signify 'urban planning' primarily relies on the online database, 'Acronym Finder' (https://www.acronymfinder.com). Acronym Finder is a free searchable database of acronyms and abbreviations.
5. Acronym Finder may contain an entry which illustrates an ordinary signification somewhere in the world and in some context. However, the mere existence of an entry on this database does not automatically mean a sign has an ordinary signification in Australia, in the context of a given good or service.
6. The entry for the 'urban planning' definition of UP contains a section called 'Samples in periodicals archive'. This appears to show examples of the acronym used in text, with a view to supporting the definition provided in the entry. Six entries exist for UP (urban planning).
7. The six entries are from Pakistan, the United Arab Emirates (UAE), Lithuania, and Bahrain. Only the example from Pakistan and the two from the UAE show UP as an abbreviation for 'urban planning'. These are dated from 2010 to 2013. In the UAE examples, the letters are used within an abbreviation for a longer organisation name (the Abu Dhabi Urban Planning Council, shortened to UPC), rather than being a general abbreviation of 'urban planning'. Additionally, none of the examples are relevant to the Australian market. In my view, the Acronym Finder entry does not support that UP is generally understood as being an acronym for 'urban planning', or would be perceived as such, in the Australian market.
8. In the second adverse report, additional supporting evidence was provided to the Holder in the form of links to websites.
9. The first link (https://www.woollahra.nsw.gov.au/Council/Meetings-and-committees/Commit tees/up) shows the letters UP appearing to abbreviate the words 'Urban Planning Committee' in its entirety. Considering the other abbreviations on this page, such as C&W (abbreviation of Corporate & Works Committee), and C&E (abbreviation of Community & Environment Committee), UP in this context appears to be an arbitrary internal name, rather than reflecting an established ordinary signification.
10. The second (https://reg.msu.edu/Read/DescCourses/2021-22/up.pdf) and third (https://bullet ins.wayne.edu/courses/up/) links appear to be, or were, links to the websites of two North American universities. These are not Australian resources, not directed to Australians, nor necessarily in relation to the Designated Services. Additionally, while universities may abbreviate longer course names, it does not automatically follow that an abbreviated course name at an overseas university demonstrates an ordinary signification generally, or in the Australian market.
11. The fourth and fifth links (both https://www.scribd.com/document/520922464/Report) discuss urban planning with reference to the letters UP. Reading this resource, the letters UP signify the state of Uttar Pradesh in India. UP is not used to abbreviate or signify the words urban planning.
12. Considering the information available to me, I am not satisfied that the letters UP signify urban planning in context of the Designated Services in Australia. Therefore, I am not satisfied that the Trade Mark, as a whole, has an ordinary signification. As the first stage of the test in Cantarella has not been met, there is no need to engage with the second stage_._

(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. As I am not satisfied there are grounds for rejecting this IRDA under s 41, I accept the IRDA for protection in Australia.

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

[2] Regulation 17A.24(1).

[3] [1964] HCA 55, [5].

[4] [2014] HCA 48, (French CJ, Hayne, Crennan, Kiefel and Gageler JJ).

[5] Ibid [71] (French CJ, Hayne, Crennan and Kiefel JJ) (citations omitted).