The recent Trade Marks Hearings Office decision Mackay Airport Pty Ltd [2013] ATMO 17 (13 March 2013), concerning an application to register the trade mark MACKAY AIRPORT, highlights the difficulty registering trade marks which are directly descriptive of the goods or services in respect of which the trade mark is used.

The operator and manager of Mackay Airport (’the applicant’) applied to register the trade mark MACKAY AIRPORT for a wide range of services, including services generally provided by an airport.

The Hearing Officer accordingly held that the trade mark failed to distinguish the applicant’s services, and would be required for use by numerous parties. The application was therefore rejected.

What You Need to Know

The decision highlights the difficulties of registering a trade mark that is directly descriptive of the goods or services in respect of which it is used. The decision also reinforces the principle that extensive use of a trade mark will not necessarily establish that the trade mark is distinctive, and that evidence submitted in support of a trade mark application should demonstrate use of the trade mark as a trade mark , that is, as a badge of origin for the applicant, not use of the trade mark in a descriptive manner.

Further Details

The Trade Marks Office objected to the trade mark on the basis that it was descriptive of airport services provided in Mackay, in northern Queensland. The applicant provided submissions and evidence of use in response to the objections, but was unable to obtain acceptance of the application. The applicant subsequently requested a hearing.

The primary issue for the Hearing Officer was whether section 41(5) or section 41(6) of the Trade Marks Act 1995 (Cth) applied, and whether the applicant had provided sufficient evidence to establish its claim under one or other of these provisions. Section 41(5) concerns trade marks with some inherent adaption to distinguish, and section 41(6) concerns trade marks with no inherent adaption to distinguish. The evidentiary standard required to overcome section 41(6) is much more stringent than that for section 41(5).

Not surprisingly, the Hearing Officer found that the trade mark MACKAY AIRPORT was descriptive of services provided by an airport in the city of Mackay, and that other traders should be able to use the term “Mackay Airport”. The applicant’s evidence was therefore to be assessed pursuant to section 41(6).

The applicant submitted a large volume of evidence. The Hearing Officer was not persuaded that the trade mark was distinctive of the applicant however. The Hearing Officer was of the view that the evidence generally showed descriptive and generic use of the trade mark, to refer to the airport operating in Mackay. The evidence did not show use of the trade mark as a trade mark. Additionally, the evidence did not show that the public understood the expression “Mackay Airport” as a trade mark, or as a badge of origin for the applicant. The Hearing Officer also noted that numerous other traders use the expression “Mackay Airport” in connection with the airport at Mackay, rather than in connection with the applicant.