Australian Postal Commission (Trading as Australia Post), Re

This matter concerned an application by the Australian Postal Commission, trading as Australia Post, to register a trade mark in Part B of the Register. The applicant sought registration for postal and mail services, excluding electronic services, for a mark comprising the words "INTERNATIONAL EXPRESS POST" and "A PART OF EMS - THE WORLDWIDE POSTAL COURIER NETWORK". An examiner objected to the mark's registration on the grounds that it was directly descriptive of the services offered and lacked sufficient distinctiveness.

The delegate was required to determine whether the trade mark was inherently adapted to distinguish the applicant's services or was capable of becoming distinctive through use. This involved assessing whether the mark, as presented, would be adopted by other traders for similar services without improper motive, and whether any evidence of use had rendered it distinctive in fact. The delegate also had to consider the effect of the applicant's proposed disclaimers of exclusive rights to certain words within the mark.

The delegate reasoned that the words within the mark, including "INTERNATIONAL EXPRESS POST" and "EMS" (interpreted as Electronic Mail System), were descriptive and non-distinctive. While acknowledging the applicant's extensive use of the mark and significant advertising expenditure, the delegate found that the combination and presentation of these descriptive elements did not create a distinctive mark or one capable of becoming distinctive. The delegate applied the principle that evidence of factual distinctiveness is weighed against the mark's inherent non-distinctiveness, and that descriptive marks generally cannot be registered even with substantial use. The delegate also noted that disclaimers are not a means to register inherently unregistrable words.

Consequently, the delegate refused the application for registration in Part B of the Register, finding that the mark lacked inherent adaptability to distinguish and that the evidence of use did not overcome this fundamental deficiency.