Australia Update – When use supersedes descriptiveness


ATP Institute Pty Ltd [2018] ATMO 94 (15 June 2018)

This matter concerned an application by ATP Institute Pty Ltd to register the trade mark MULTI FOOD in connection with supplements in Class 5.

The application was objected to by the Examiner on the basis that the trade mark was directly descriptive of the goods covered.  That objection was maintained throughout the examination and several responses by the applicant.

At the hearing, the applicant led evidence of the use of its trade mark in Australia.  That use represented a little over one year of commercial use, all post-filing, but the sales figures were ‘significant’ and the applicant’s goods sold in some 458 retail outlets.

Even though the Hearing Officer made it clear that the trade mark was too descriptive for registration, the trade mark qualified for registration under the use and intended use provisions of section 41, which allows for trade marks that are otherwise too descriptive for registration to be registered on the basis that the trade mark has acquired distinctiveness through use, or, at least, has the demonstrated capacity to acquire distinctiveness.

To read the Office Decision, click here.

Please don’t hesitate to contact us shall you have any questions on the protection of your trade marks in Australia.

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