Irene Notaras, through the “Bon Trading Company” is the exclusive distributor of an Italian coffeemaker and seeks to have its shape registered as a composite trade mark. After three negative examination reports, Mrs. Notaras receives from the Trade Mark Office a notice of intention to reject the application on the ground under s 41(6) of the Trade Marks Act 1995 (Cth) that the shape is commonly used for the designated goods and thus not inherently adapted to distinguish. Mrs. Notaras thereafter requests to be heard on the matter.
The delegate of the registrar decided that the particular shape of the coffeemaker is “stylized and striking” so to make it capable of distinguishing this coffeemaker from those of others. However, Mrs. Notaras did not satisfy the requirement of establishing sufficient evidence of use for the application to succeed under s 41(5) of the Trade Marks Act 1995 (Cth).
What is important is that the mark needs to be able to “distinguish the goods as being those of the Applicant”, i.e. the distributor, Mrs. Notaras. It is not sufficient for it to distinguish goods as being those of the manufacturer in Italy for the application to be successful. Also, even though the mark of the Italian manufacturer has expired, a mark could still be allocated to an Australian distributor, provided that mark is capable of distinguishing the goods under that mark as being those of the distributor.