Australia Dairy Corporation

This matter concerns trade mark application number 734489 for the words "NATIONAL HEALTHY BONES WEEK", filed by the Australian Dairy Corporation. The application sought registration in Class 16 for various paper goods, printed matter, stationery, and instructional materials. The examiner initially rejected the application on the grounds that the trade mark lacked sufficient inherent adaptation to distinguish the specified goods, suggesting that other organisations might wish to use such a phrase for a week dedicated to preventative skeletal care. Despite the applicant's submissions and the provision of evidence, the examiner maintained the rejection, leading to the matter being set down for a hearing before a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the trade mark "NATIONAL HEALTHY BONES WEEK" was capable of distinguishing the applicant's goods from those of other persons, as required by section 41 of the *Trade Marks Act 1995* (the Act). This involved assessing the inherent adaptability of the trade mark to distinguish and, if that was insufficient, considering the extent to which its use had actually distinguished the goods. The delegate also had to determine if the use of the trade mark, particularly in relation to goods distributed free of charge, constituted use "in the course of trade" as defined by the Act.

The delegate reasoned that the phrase "NATIONAL HEALTHY BONES WEEK" is not inherently adapted to distinguish the applicant's goods because other traders, in the ordinary course of their business and without improper motive, would likely desire to use such a phrase to promote awareness of health issues. The delegate found that the evidence provided by the applicant, which overwhelmingly related to the use of a composite mark in respect of services and not goods in Class 16, was insufficient to establish that the trade mark actually distinguished the applicant's goods at the time of filing. Furthermore, the delegate concluded that the distribution of Class 16 goods free of charge, primarily to promote dairy products or raise health awareness, did not constitute use "in the course of trade" for the purpose of trade mark registration, as these goods were ancillary to the actual products and services traded.

Consequently, the delegate found that the trade mark was not inherently adapted to distinguish the designated goods and that the evidence of use was insufficient to establish that it did distinguish them. Accordingly, the application was rejected under section 41(2) of the Act.