The University of Sydney v The University of Wollongong [2016] ATMO 17 (4 March 2016)

The University of Sydney (UOS) opposed the registration of the trade mark SYDNEY BUSINESS SCHOOL by University of Wollongong (UOW) under section 41 – that the trade mark is not capable of distinguishing the applicant’s goods and services.

The Hearing Officer’s first step was to find that the trade mark SYDNEY BUSINESS SCHOOL is not to any extent inherently adapted to distinguish the applicant’s goods and services.

Following this, the Hearing Officer considered the evidence of use filed by UOW. What emerged from the evidence of use, according to the Hearing Officer, was use of SYDNEY BUSINESS SCHOOL in conjunction with the UOW name and/or crest. Furthermore, the Hearing Officer found that many of the examples were not ‘use’ of the trade mark SYDNEY BUSINESS SCHOOL at all, rather these examples were illustration of the descriptive use of the words.

It was found that the trade mark was not capable of distinguishing and its use by UOW was not sufficient for acceptance on the basis of acquired distinctiveness.

*There is some background to this matter contained within the decision. We have not reported here as it does not have a direct impact on the Hearing Officer’s decision or the basis of the objection.

To view the Office decision, click here.