Australian Rail Track Corporation Limited

The Australian Rail Track Corporation Limited (ARTC) sought to register the trade mark "INLAND RAIL". The dispute concerned whether the ARTC was entitled to registration of this mark, which involved an assessment of the potential impact on other traders. The matter was before Justice Heath Wilson of the Federal Court of Australia.

The central legal issue was whether the words "INLAND RAIL" were capable of being used by other traders in good faith to describe their goods or services, a key consideration in trade mark registration. This required the court to determine the ordinary signification of the words and whether other traders, acting honestly, would have a legitimate desire to use "INLAND RAIL" in connection with their own goods or services. The court had to consider whether the ARTC's reputation in the mark, or the specialised nature of the services, precluded other traders from legitimately desiring to use the words.

Justice Wilson applied the principles established in cases such as *Registrar of Trade Marks v Du Cros*, *Clark Equipment v Registrar of Trade Marks*, and *Burger King Corporation v Registrar of Trade Marks*. The court considered that the ordinary signification of a word mark is closely related to whether other traders are likely, in the ordinary course of their business and without improper motive, to desire to use the same or a similar mark. The judge noted that evidence of other traders' use of a mark, or similar marks, can be admissible to demonstrate both the ordinary signification and the likelihood of other traders desiring to use it. However, the court emphasised that the question is not one of absolute "need" but rather whether traders are likely, with no improper motive, to desire to use the words for their ordinary signification. The court also referred to the long-standing requirement that proposed trade marks be examined from the perspective of the potential impairment of honest traders' rights to conduct their business in their natural mode, and from the public's perspective.