Allshelter Pty Ltd v Price and Speed Containers Pty Limited

This matter concerned an application by Allshelter Pty Ltd to register a trade mark, opposed by Price and Speed Containers Pty Limited. The dispute centred on whether the proposed trade mark was inherently adapted to distinguish the applicant's goods, or if it was descriptive and likely to be used by other traders. The decision was made by Iain Campbell Thompson.

The primary legal issue before the court was whether the trade mark applied for was inherently adapted to distinguish the applicant's goods, as required by section 41 of the relevant Act. This involved assessing whether the mark, independent of registration, was likely to enable the applicant to distinguish its goods from those of others, and whether other traders, acting legitimately, would likely wish to use the same or a similar mark in connection with similar goods. The court also considered whether the mark fell under subsections 41(3) or (4), which could lead to its rejection if it was not capable of distinguishing the designated goods.

The court applied the test for inherent adaptation to distinguish as articulated in *Clark Equipment Co v Registrar of Trade Marks*, which requires consideration of whether the mark, apart from the effects of registration, is likely to achieve the applicant's object of distinguishing its goods. Crucially, the court adopted the principle from *Registrar of Trade Marks v. W. & G. Du Cros Ltd.*, emphasizing that the applicant's chance of success depends on whether other traders are likely, in the ordinary course of business and without improper motive, to desire to use the same or a similar mark. This involves balancing the applicant's right to a trade mark with the public's right to make honest use of words for their ordinary signification.

Ultimately, the court refused to register the trade mark application. As the opponent was successful, it was awarded its costs on the scale set out in Schedule 8 to the Trade Mark Regulations 1995.