Cases – NO inherent adaptation to distinguish

The following marks  have been found to be without any inherent adaptation to distinguish.

High Court

WHOPPER: for “all goods in class 30 including sandwiches.”

Burger King Corp v Registrar of Trade Marks (1973) 128 CLR 417.

BARRIER: for skin creams.

F H Faulding & Co Ltd v Imperial Chemical Industries Ltd (1965) 112 CLR 537.

MICHIGAN: for “tractor shovels, front-end loaders, crawler-type and truck-mounted excavator cranes, power shovels and cranes, bulldozers, tractor dozers, tractor scrapers, tractor loggers, and accessories and attachments therefor.”

Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511.

ROHOE: for agricultural implements (including rotary hoes).

Howard Auto-Cultivators Ltd v Webb Industries Pty Ltd (1946) 72 CLR 175.

GREAT WESTERN: for still and sparkling wines.

Thompson v B Seppelt & Sons Ltd (1925) 37 CLR 305.

Federal Court (Full Court)

YELLOW: for broad classes of goods and services which include print and online telephone directories and related goods and services.

Phone Directories Company Australia v Telstra Corporation Ltd (2014) 106 IPR 281.

COLORADO: for amongst other things, “bags, wallets, purses, backpacks, belts, clothing, boots, shoes, slippers and other footwear.”

Colorado Group Ltd v Strandbags Group Pty Ltd (2007) 164 FCR 506.

OXFORD: for “Printed publications being goods in Class 16.”

Chancellor, Masters and Scholars of the University of Oxford (t/as Oxford University Press) v Registrar of Trade Marks (1990) 24 FCR 1.

Federal Court

AUSTRALIA'S CHEAPEST CHEMIST: for “Retailing, online retailing and mail ordering services; all relating to pharmacies” and “Medical, hygienic, beauty care services all relating to pharmacies; all of the foregoing being pharmacy advisory and pharmacy dispensary services”

Verrocchi v Direct Chemist Outlet Pty Ltd [2015] FCA 234

APP STORE: for various services within classes 35, 38 and 42.

Apple v Registrar of Trade Marks (2014) 109 IPR 187.

PERSIAN FETTA: for dairy products including cheese.

Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd (2010) 191 FCR 297.

REAL: for various classes including take-away foods and beverages.

Unilever (Aust) Ltd v Karounos (2001) 52 IPR 361.

CRANBERRY CLASSIC: for “fruit juices, fruit drinks and soft drinks”.

Ocean Spray Cranberries Inc v Registrar of Trade Marks (2000) 47 IPR 579.

OREGON: for power tool accessories, and in particular, accessories for chainsaws.

Blount Inc v Registrar of Trade Marks (1998) 83 FCR 50.

Trade Marks Office

BEAUTIFUL: for perfumery, essential oils and cosmetics

Re Estee Lauder Cosmetics Ltd (2000) 50 IPR 131 (registration permitted in respect of perfumes due to level of reputation at time of application: s 41(6) TMA).

FIVE STAR FERTILIZER: for fertilisers for agricultural and horticultural use.

AG Direct Sales Ltd v Micro Bros Ltd (2002) 56 IPR 316.

MINT SLICE: for “biscuits, cookies and crackers”.

Re Application by Arnott’s Biscuits Ltd (1998) 42 IPR 218.

PLUSH: for “clothing, footwear and headgear”.

Re Tomorrow’s Apparel Pty Ltd (2003) AIPC 91-891.

BABYCHINO (with star device): for flavoured milk, yoghurts & smoothies, ice cream and gelato.

McDonald’s Corporation v John Panuccio (2006) AIPC 92-202.

DOMAIN SHIELD: for services including “compilation, creation and maintenance of a register of domain names; registration of domain names”.

Domain Shield Pty Ltd [2014] ATMO 30

TRUE A2: for semen products, animal breeding products etc

A2 Corporation Ltd [2014] ATMO 94.


various goods and services including “debit and credit cards”

Cashcard Australia Ltd [2007] ATMO 70


“Installation, repair, maintenance and construction services in relation to electrical and electronic apparatus and equipment including control equipment and apparatus for controlling domestic lighting installations, lighting, lighting systems, lighting apparatus, lighting equipment, data equipment and systems, video and DVD equipment and systems, audio and audio-visual equipment and systems, climate control equipment and systems, security equipment and systems, home automation systems”

Complete Technology Integrations Pty Ltd v Smart Home Solutions Pty Ltd (2008) 78 IPR 95.

PANKO: for “Fish, including cooked fish and chips (potatoes); fresh, frozen and cooked seafood and seafood products; seafood including fish, prawns, shrimp, lobster, crab, scallops, crayfish and other crustacean, oysters, mussels, squid, octopus, abalone; cooked meat, meat products and extracts poultry and game; dried and cooked fruit and vegetables”

Pacific West Foods Australia Pty Ltd [2008] ATMO 47.

HELPS BABY BREATHE EASIER, NATURALLY:for “Saline preparations in this class including preparations for application to mucous membranes; nasal preparations comprising or containing saline; nasal drops including saline nasal drops”.

Valeant Pharmaceuticals International v Care Pharmaceuticals Pty Ltd [2008] ATMO 51

WHISKERS PURPLE : for “foodstuffs for domestic pets and additives for such foodstuffs”

Effen Foods v Nestle SA [2008] ATMO 55. See also Federal Court decision re this mark: Mars Australia PL v Societe des Produits Nestle (2010) 86 IPR 581 – opposition withdrawn & mark proceeded to registration – Bennett J accepted Mars’ submission that “having regard to Mars’ use of the mark, Whiskas Purple was at the priority date capable of distinguishing Mars’ goods within the amended specification now proposed”.

1800BLINDS: for ” Sales of vertical blinds, venetian blinds, holland blinds” etc

1300 Australia Pty Ltd v 1800 Blinds Pty Ltd [2008] ATMO 57.

CAMPARI: for “fresh fruit and vegetables” and advertising services. Trade mark rejected under s 41 in respect of fresh fruit and vegetables because CAMPARI is the name of a variety of tomato.

Davide Campari-Milano SpA v Perfection Fresh Australia Pty Ltd [2008] ATMO 53.

LEAFGUARD: for “installation of gutters for commercial and residential purposes”.

Richard Jelacic v Leafguard Gutter Systems Inc [2010] ATMO 20

LOCAL DIRECTORIES YOUR LOCAL PHONE BOOK: various goods and services including “printed publications and annual private, professional and commercial telephone, locality and street directories”

Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd [2010] ATMO 37.

FIJI:for natural spring water.

Paramount International Export, Ltd [2009] ATMO 94.

HEELGUARD: for grated access covers made of metal for pits, trenches, drains etc

Paige Stainless Pty Ltd v Aco Polycrete Pty Ltd [2011] ATMO 87

YOU’RE LOCAL, WE’RE LOCAL: for various goods and services including “directories (printed matter) including annual private, professional and commercial, telephone, locality and street directories; telephone books”.

Telstra Corporation Limited v Phone Directories Company Australia Pty Ltd [2012] ATMO 114.

SANREMO: for various technical devices including remote controls.

Clearlight Investments Pty Ltd v Sandvik Mining and Construction Oy [2013] ATMO 50.

REMISSION POSSIBLE: for pharmaceutical preparations.

Wyeth LLC [2013] ATMO 59.

RITE PRICE: for retail sales, installation and maintenance of heating and cooling systems.

Knowles Airconditioning & Plumbing Pty Ltd [2013] ATMO 42.

EXTRA DRY: for beer and ales.

Michael Harvey v Lion-Beer, Spirits & Wine Pty Ltd [2013] ATMO 5.

MACKAY AIRPORT: for various services including “air transport; air transport of goods; air transport of passengers; air transportation services; airline transport; arrangement for the transportation of goods”

Mackay Airport Pty. Limited [2013] ATMO 17.

Other jurisdictions

EUTECTIC: for chemical substances, metals and alloys etc for welding, soldering and brazing.

Eutectic Corporation v Registrar of Trade Marks (1980) 32 ALR 211 (NSWSC).

PERFECTION: for soap.

Joseph Crosfield & Sons Ltd’s Application (1909) 26 RPC 837.

ORLWOOLA: for, amongst other things, woollen goods.

“Orlwoola” Trade Mark (1909) 26 RPC 850.

W & G: for motor vehicles.

Registrar of Trade Marks v W & G Du Cros Ltd [1913] AC 624

DIABOLO: for tops.

Philippart v William Whiteley Ltd [1908] 2 Ch 274.

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