Second Time’s a Charm for Red Energy


Red Energy Pty Limited v Registrar of Trade Marks [2018] FCA 1449

Red Energy Pty Ltd, an energy retailer, applied to register the mark EVENPAY for a range of goods and services including “financial services” in class 36. An objection based on inherent distinctiveness was raised during examination of the application and following a Hearing, the application was refused on the basis that the mark EVENPAY is not to any extent inherently adapted to distinguish. Red Energy appealed the decision to the Federal Court.

On appeal, the Court must accept the application unless satisfied that there are grounds to reject it under the Act. Although weight will be given to the Registrar’s decision to initially reject the application, there is no presumption in favour of the Registrar’s initial Hearing decision. An Appeal before the Federal Court is also de novo. In this case, the Registrar elected not to file any submissions or evidence in relation to the Appeal. This meant that, on Appeal, the Registrar did not maintain that the mark was not to any extent inherently adapted to distinguish and without this, the Court could not find that there were grounds to reject the mark under the Act. Accordingly, the Court granted the appeal and called for the mark to be registered.

In addition to this finding, Justice Beach held that the mark EVENPAY appears to be an invented word and does not have a meaning that a consumer would immediately perceive, as multiple meaning can be ascribed to the word EVEN which adds to the “ambiguity and richness of meaning from a customer standpoint”. The space between the words EVEN and PAY supports a finding that the mark EVENPAY does not have an ordinary signification and there are plenty of alternative marks for traders to choose.

This case should give hope to trade mark applicants that a different outcome may be available by appealing an unsatisfactory Hearing decision to the Federal Court.

To read the full decision click here.

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