AM Corporation Limited, Re

AM Corporation Limited applied to register the trade mark "Cashback Pension" for superannuation pension services. The examiner objected to the registration under various paragraphs of the Act, primarily on the grounds that the words directly described the character or quality of the services, specifically that they referred to a superannuation pension service providing a cash return. While an objection under section 33 was initially raised, it lapsed as the cited mark expired. The applicant provided evidence in support of its application, but the examiner remained unconvinced of the mark's inherent adaptability to distinguish the services or its acquired distinctiveness. The applicant subsequently waived its right to a hearing and requested a decision based on the written record.

The delegate of the Registrar of Trade Marks was required to determine whether the mark "Cashback Pension" was registrable in Part A of the Register, considering paragraphs 24(1)(c), (d), and (e), and sub-sections 24(2) and 26(2) of the Act. The delegate also considered, for completeness, registrability in Part B. The core legal issues revolved around whether the mark constituted an invented word, whether it made a direct reference to the character or quality of the services, and whether it possessed inherent adaptability to distinguish or had acquired distinctiveness through use.

The delegate reasoned that "Cashback Pension" was not an invented word because, while "Cashback" might be newly coined, the combination of the two words would be readily understood by ordinary Australians to mean that the superannuation pension service provides a cash return. Furthermore, the delegate found that the words made a direct reference to the character or quality of the services, as they aptly described a superannuation pension service that returns cash to the contributor. The mark, being in plain script, lacked inherent distinctiveness. Although the applicant provided evidence of use since 1986, the delegate concluded that this evidence did not establish that the mark had become distinctive. The evidence suggested the word "Cashback" was used descriptively, and the supporting declarations were unclear as to which marks they referred. The financial figures provided did not demonstrate significant public interest or exposure to the mark at the time of lodgement. Consequently, the delegate found the mark not registrable in Part A. For Part B, the delegate determined that the evidence was insufficient to outweigh the mark's lack of inherent distinctiveness and establish its capability of becoming distinctive.

The application for registration of the trade mark "Cashback Pension" was refused.