Austereo Pty Ltd v DMG Radio (Australia) Pty Ltd

Austereo Pty Ltd (the applicant) sought to register the trade mark "sounds different" for broadcasting services. DMG Radio (Australia) Pty Ltd (the opponent) opposed this application, relying solely on sub-section 41(2) of the Act, which requires a trade mark to be capable of distinguishing the applicant's goods or services from those of other traders. The Hearing Officer, Jock McDonagh, was tasked with determining whether the trade mark "sounds different" met this requirement.

The central legal issue was whether the trade mark "sounds different" was capable of distinguishing the applicant's broadcasting services. This involved considering whether the mark was inherently adapted to distinguish, and if not, whether it had acquired distinctiveness through use. The opponent argued that the words "sounds different" directly referred to the nature or quality of broadcasting content, making it likely that other broadcasters would wish to use similar words to describe their own services without improper motive. Consequently, the opponent contended the mark was not inherently adapted to distinguish and that, in the absence of evidence of prior use, the opposition should succeed.

The Hearing Officer applied the principles established in *Clark Equipment Co v Registrar of Trade Marks* and *Registrar of Trade Marks v W. & G. Du Cros Ltd*. These authorities indicate that the test for distinctiveness focuses on whether the mark, apart from the effects of registration, is likely to enable the applicant to distinguish its goods or services. The Hearing Officer found that there was no evidence to support the opponent's grounds of opposition, and implicitly, that the applicant's mark was capable of distinguishing the services.

The Hearing Officer ordered that the trade mark application could proceed to registration one month from the date of the decision, unless an appeal was filed. The opponent was ordered to pay the applicant's costs.