TCHENKILTCHUN [2014] ATMO 28

Applicant applied to register the trade mark LANCASTER in relation to leather goods and belts.  An objection was raised by the Trade Marks Office that the trade mark did not have the necessary capacity to distinguish as it is both the name of a place and a ‘common’ surname in Australia.

In its initial response, the applicant noted that it had, in 1998, been able to register the identical trade mark in Australia without objection in relation to Class 3 goods.  The Examiner and later the Hearing Officer both dismissed this apparent inconsistency in practice by noting:

[A]lthough consistency in public administration is desirable, a public officer is not justified in persisting with error.

The applicant pursued its application to a Hearing and led evidence of its use of its trade mark overseas, but not in Australia and without any advertising or sales figures.  The applicant’s evidence also provided, in the Hearing Officer’s view, ‘insufficient detail of the Holder’s intention to use it [in Australia]’.

Accordingly, the Hearing Officer found that the Examiner’s initial view that the trade mark was not inherently adapted to distinguish was correct and refused to accept the registration, noting that the evidence of use was insufficient to support the acceptance.

To view the Office decision, click here.