Andrea Gattini, Re

This decision concerns an application by Andrea Gattini for registration of the word mark ITALTOURS in class 39, specifically for "tour operator" services. The application was objected to by the examiner on the grounds that the mark had a direct reference to the character or quality of the services, was not an invented word, and was not inherently distinctive. The applicant provided evidence of use and advertising expenditure in an attempt to overcome these objections.

The delegate was required to determine whether the mark ITALTOURS was registrable under the relevant provisions of the Act. Specifically, the delegate had to consider whether the mark had a direct reference to the character or quality of the services, whether it qualified as an invented word, and whether it was distinctive, either inherently or through use, for registration in Part A or Part B of the Register.

The delegate reasoned that the prefix "Ital" clearly indicated "Italian" or "Italy," and when combined with "Tours," the mark ITALTOURS directly described services relating to tours to or in Italy. Applying the principle from *Mark Foys Limited v Davies Coop and Company Limited*, the delegate found that ordinary persons would understand the mark as describing the services. The delegate also determined that the mark was not an invented word, citing *Eastman Photographic Material Company Ltd*, as it was a mere combination of two known words. Furthermore, the evidence of use and advertising expenditure was deemed insufficient to render the mark distinctive in fact, and the mark was not considered inherently adapted to distinguish the applicant's services, following the principles in *Clark Equipment Co v Registrar of Trade Marks* and *Burger King Corp v Registrar of Trade Marks*.

Consequently, the delegate concluded that the mark ITALTOURS was not suitable for registration in either Part A or Part B of the Register and refused the application.