Australian Postal Corporation

The Australian Postal Corporation, trading as Australia Post, applied to register the trade mark "Post Office" for electronic mail delivery and communication services (Class 38) and mail delivery and courier services (Class 39). The application was initially rejected by an examiner on the grounds that the trade mark was not capable of distinguishing the applicant's services from those of other persons, pursuant to section 41 of the *Trade Marks Act 1995* (Cth). Following several rounds of submissions and the provision of evidence, including a market survey, the matter proceeded to a hearing before a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the trade mark "Post Office" was capable of distinguishing the services for which registration was sought, as required by section 41(2) of the Act. This involved a two-stage inquiry. First, the delegate had to consider the extent to which the trade mark was inherently adapted to distinguish the services, as per section 41(3). If, after this initial consideration, the delegate was unable to decide the question, the inquiry would then turn to whether, by virtue of the combined effect of inherent adaptation, use, and other circumstances, the trade mark did or would distinguish the services, pursuant to section 41(5) and (6).

The delegate reasoned that "Post Office" is a dictionary term with definitions directly corresponding to the services in question, indicating a lack of inherent distinctiveness. The delegate noted that while the applicant had a long history of use and a significant market presence, the term "Post Office" is the ordinary description for such services. The delegate also considered that statutory monopolies and government regulation, while historically significant, could not be taken into account when assessing inherent adaptation. Furthermore, the delegate found that the term was used internationally and had penetrated cyberspace in a generic sense, suggesting it was not inherently adapted to distinguish Australia Post's services. Consequently, the delegate moved to consider the evidence of use under section 41(6). The delegate found the market survey evidence, while professionally conducted, to be deficient in detail and scope, particularly concerning the "high tech" electronic services. Ultimately, the delegate concluded that the survey evidence did not establish, on the balance of probabilities, that a sufficient proportion of the population recognised "Post Office" as identifying Australia Post's services and no others.

Accordingly, the delegate found that the applicant had not established that the trade mark "Post Office" did distinguish its designated services. Therefore, the application was rejected pursuant to section 41(2) of the *Trade Marks Act 1995*.