Registration of the combination mark of the words SAFARI SNORKEL and the three-dimensional shape by Australian Performance Development Pty Ltd (‘the Applicant’) was opposed by Ironman 4×4 Pty Ltd (‘the Opponent’). Section 41 and 59 grounds were relied upon by the opponent at the hearing.
Evidence led by the Opponent attempted to establish that the Applicant’s air rams are indistinguishable and do not indicate the trade source of the goods. Consequently the trade mark does not distinguish, nor could it ever have been supposed that it had been intended to distinguish, the Applicant’s goods. The Delegate upheld the application.
A determination of the application of section 41 depended on the characterisation of the trade mark. The Opponent asserted that the words served as a mere “colourable flourish” on the shape of the air ram itself and so the Trade mark ought to be understood as a shape the form of which, being purely functional, was not capable of distinguishing the particular goods.
The Delegate resolved the issue by examining the mark as a potential customer would. He considered that a potential customer would examine the goods from a short distance. At this distance both the word and device element are prominent and so ought to be taken together. He concluded from this examination, evidence that “purchasers… rely on logos, get up and word marks to indicate the trade origin of such goods”, and the distinctiveness of the word SAFARI as registered separately by the Applicant in relation to class 12 goods, that the composite trade mark as a whole was inherently capable of distinguishing the goods.
As for section 59, the Delegate concurred with submissions of the Applicant that filing of an application for registration is prima facie evidence of intention to use, and that this intention is supported by evidence of actual use of the trade mark to distinguish the relevant goods.