Div 2Grounds for rejecting an application

Division 2—Grounds for rejecting an application Trade mark containing etc. certain signs 37. An application for the registration of a trade mark may be rejected if the trade mark contains or consists of: (a) a sign that is prescribed for the purposes of this section; or (b) a sign so nearly resembling such a sign as to be likely to be taken for it. Trade mark that cannot be represented in writing 38. An application for the registration of a trade mark must be rejected if the trade mark cannot be represented in writing. Note: “Writing” has the meaning given by section 25 of the Acts Interpretation Act 1901 which provides as follows: “‘Writing’ includes any mode of representing or reproducing words, figures, drawings or symbols in a visible form.”. Trade mark consisting of shape of goods 39. An application for the registration of a trade mark in respect of goods must be rejected if the trade mark consists wholly or principally of: (a) the shape, or some other characteristic, possessed, because of their nature, by the goods; or (b) a shape, or some other characteristic, that the goods must have if a particular technical result is to be obtained. Trade mark not distinguishing applicant’s goods or services 40.(1) In this section, a reference to the use of a trade mark by an applicant for the registration of the trade mark includes a reference to the use of the trade mark by a predecessor in title (if any) of the applicant. (2) 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 (“designated goods or services”) from the goods or services of other persons. (3) In deciding the question whether or not a trade mark is capable of distinguishing the designated goods or services from the goods or services of other persons, the Registrar must first take into account the extent to which the trade mark is inherently to distinguish the designated goods or services. (4) Then, if the Registrar is still unable to decide the question, the Registrar is to take into account: (a) the extent to which the trade mark does in fact so distinguish the designated goods or services because of any or all of the following: (i) the use made by the applicant of the trade mark; (ii) the extent to which it is inherently adapted to distinguish the designated goods or services; (iii) any other circumstances; or (b) the extent to which the trade mark will in fact so distinguish the designated goods or services because of any or all of the following: (i) the use made, and likely to be made, by the applicant of the trade mark; (ii) the extent to which it is inherently adapted to distinguish the designated goods or services; (iii) any other circumstances; or (c) if the applicant has not used the trade mark—the extent to which the trade mark will in fact so distinguish the designated goods or services because of either or both of the following: (i) the intended use of the trade mark by the applicant together with the extent to which it is inherently adapted to distinguish the designated goods or services; (ii) any other circumstances. Trade mark consisting of signs designating quality etc. 41.(1) Subject to subsection (2), an application for the registration of a trade mark must be rejected if the trade mark consists wholly or principally of a sign that is ordinarily used to indicate: (a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of the goods or services; or (b) the time of production of the goods or of the rendering of the services. (2) The application must not be rejected if the applicant establishes that, because of the extent to which the applicant has used the trade mark, the trade mark does distinguish the goods or services in relation to which it has been used as being those of the applicant. Scandalous marks etc. 42.(1) An application for the registration of a trade mark must be rejected if: (a) the trade mark contains or consists of scandalous matter; or (b) its use would be contrary to law or would not be entitled to protection in a court. (2) An application for the registration of a trade mark in respect of particular goods or services must be rejected if the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion regarding: (a) the nature, quality, origin, intended purpose, or some other characteristic, of the goods or services; or (b) any connection or relationship that they may have with any particular person. Trade mark consisting etc. of name etc. of person other than the applicant 43. If: (a) in relation to an application, the Registrar has asked under section 29 that evidence be provided of the consent of a particular person; and (b) the applicant has not provided the evidence as asked; the Registrar must reject the application. Identical etc. trade marks 44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark in respect of goods (“applicant’s trade mark”) must be rejected if: (a) the applicant’s trade mark is substantially identical with, or deceptively similar to: (i) a trade mark registered by another person; or (ii) a trade mark in respect of which an application for registration has been made by another person; that relates to: (iii) goods that are the same as. or of the same description as that of, the goods (“applicant’s goods”) to which the applicant’s trade mark relates; or (iv) services that are closely related to the applicant’s goods; and (b) the priority date for the applicant’s trade mark is not earlier than the priority date for the other trade mark. Note: For “priority date” see subsection (5). (2) Subject to subsections (3) and (4), an application for the registration of a trade mark in respect of services (“applicant’s trade mark”) must be rejected if: (a) it is substantially identical with, or deceptively similar to: (i) a trade mark registered by another person; or (ii) a trade mark in respect of which an application for registration has been made by another person; that relates to: (iii) services that are the same as, or are of the same description as that of, the services (“applicant’s services”) to which the applicant’s trade mark relates; or (iv) goods that are closely related to the applicant’s services; and (b) the priority date for the applicant’s trade mark is not earlier than the priority date for the other trade mark. Note: For “priority date” see subsection (5). (3) If the Registrar in either case is satisfied: (a) that there has been an honest concurrent use of the 2 trade marks; or (b) that, because of the other circumstances, it is proper to do so; the Registrar may accept the application for the registration of the applicant’s trade mark subject to any condition or limitation that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area. (4) If the Registrar in either case is satisfied: (a) that the applicant, or a predecessor in title of the applicant, has continuously used the applicant’s trade mark for a period before the date of registration of the other trade mark: and (b) that the applicant’s trade mark was never abandoned; the Registrar may not reject the application because of the existence of the other trade mark. (5) The “priority date” for a trade mark is: (a) if the trade mark is registered—the date of registration of the trade mark; or (b) if the registration of the trade mark is being sought—the day that would be the date of the registration of the trade mark if it were registered.