Cases – SOME inherent adaptation to distinguish

The following marks have been held to have at least some inherent adaptation to distinguish.

High Court

ORO and CINQUE STELLE: for coffee.

Cantarella Bros Pty Limited v Modena Trading Pty Limited (2014) 315 ALR 4.

TUB HAPPY: for articles of clothing.

Mark Foy’s Ltd v Davies Coop & Co Ltd (1956) 95 CLR 190.

Federal Court (Full Court)

Federal Court

ZIMA: for tomatoes.

Mastronardi Produce Ltd v Registrar of Trade Marks (2014) 108 IPR 7.

TENNIS WAREHOUSE: for “online retail services featuring tennis clothing, tennis footwear, tennis gear, tennis equipment, tennis accessories, and tennis sport bags”

Sports Warehouse v Fry Consulting (2010) 87 IPR 300 (relatively low level of inherent adaptation to distinguish and use insufficient to support registration under s 41(5)).

Trade Marks Office

CLICK & ROLL: for “cigarettes; tobacco; tobacco products; lighters; matches; smokers’ articles”.

Philip Morris Products S.A. v British American Tobacco (Brands) Limited. [2013] ATMO 22.

CRUISE HOLIDAYS:for travel agency services.

Denise Monk v Travel Leaders Franchise Group LLC [2013] ATMO 57

WATER WORLD: various services including “entertainment services relating to the conduct of amusement or theme parks”

Trust Company Limited v WW Australia Pty Limited and Village Themepark Management Pty Limited [2010] ATMO 84.

RED PAGES: for various goods and services including “books, booklets, magazines, newspapers, newsletters, information sheets, handbooks, brochures” and “directory services concerning businesses related to the sexual health and lifestyle industry”.

Virgin Mobile (Aust) Pty Ltd v Camille Hardman [2008] ATMO 49.

ULTRA CREME:  for “building materials (non-metallic) including pre-packed and bulk sand, cement, blended cement, cementitious materials in this class, mortar”.

Cockburn Cement Ltd v BGC (Australia) Pty Ltd [2008] ATMO 13.

Other jurisdictions

KIKU:  for perfume.

Kiku Trade Mark [1978] FSR 246 (Supreme Court of Ireland); “Kiku” meaning “chrysanthemum” in Japanese.

CALIFORNIA SYRUP OF FIGS: for an aperient medicine.

In re California Fig Syrup Company [1910] 1 Ch 130.

SOLIO: for photographic papers.

Solio Case [1898] AC 571.

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