MIDLAND SOFTWARE LIMITED [2014] ATMO 57 (16 JUNE 2014)

This case concerned an International Registration Designating Australia. The application was in respect of classes 9, 35 and 42 for various goods and services related to computer and IT products and services, and business administration related services. The concerned trade mark was PEOPLE FIRST.

On examination, the mark was refused for its:

- not being capable of distinguishing the goods and services of the Applicant – the term within the trade mark was ‘laudatory’ in the opinion of the Examiner, and should be available for others to use (s 41 of the Trade Mark Act); and 
- being substantially identical with or deceptively similar to certain other trade mark registrations, including POWERSTATE PEOPLE FIRST, PEOPLE FIRST and PCA PEOPLE FIRST (s 44 of the Trade Mark Act).

The Examiner invited submissions on these matters from the trade mark Applicant, to be heard by a Hearing Officer.

The Applicant submitted evidence of how it intended to use the trade mark in a stylised manner in respect of the services under the registration.

Click here to view the image.

However, there was no actual use that was provided for in evidence, and it seemed that there was no actual use to which the Applicant could point. Also, the proposed use above was quite different to that which would be covered by the registration (the mere words). Therefore the Hearing Officer found himself to be “in the position of being unable to decide the question”, and ordered that the application be rejected.

To view the Office decision, click here.