This matter concerned an opposition by Major League Baseball to the extension of protection in Australia of The National Magazine Company’s International Registration for RED covering goods and services in Classes 16, 38 and 41, including ‘organisation of competitions (education and entertainment).
The opponent pressed section 41 on the basis that the trade mark RED was not capable of distinguishing the applicant’s goods and services and that it had not been used to a sufficient extent, in Australia, to warrant acceptance under section 41.
Following the precedent set in the YELLOW case (Phone Directories Company Australia Pty Ltd v Telstra Corporation Limited (2011) 93 IPR 513), the Hearing Officer noted that a simple word (being the name of a colour) is not likely to have the inherent capacity to distinguish goods or services and that evidence of use of the trade mark would be required.
Upon reviewing the evidence of use provided, the Hearing Officer noted that the use was mainly of a stylised logo or other trade marks that included the term ‘RED’, but not of the applied for trade mark RED solus.
Accordingly, the applicant was refused registration.