Australian Rugby Union Limited

This matter concerns an application by the Australian Rugby Union Limited ("ARUL") for the registration of a trade mark, application number 784319. The proposed trade mark consists of a combination of green stars, a green shield, and green and white stripes applied to a gold background, all arranged on items of clothing that feature a white collar. ARUL sought to register this mark for various items of clothing, including football jerseys, shirts, and tracksuits. The application was examined by the Registrar of Trade Marks, who raised objections regarding the trade mark's inherent capacity to distinguish the applicant's goods. ARUL sought a hearing to argue for the registrability of its mark.

The primary legal issue before the delegate of the Registrar was whether the proposed trade mark was capable of distinguishing ARUL's goods from those of other traders, as required by section 41 of the *Trade Marks Act 1995* (Cth). This involved determining whether the trade mark possessed sufficient inherent adaptation to distinguish, or, if not, whether evidence of use had established that it did in fact distinguish the goods. The delegate also had to consider the interaction between section 33, which mandates acceptance unless grounds for rejection exist, and section 41, which outlines specific grounds for rejection, particularly concerning a trade mark's capacity to distinguish.

The delegate acknowledged that while the proposed trade mark comprised commonplace elements and colours, their specific combination and arrangement, particularly in the context of sporting apparel, could possess a degree of creativity and inherent adaptation to distinguish. However, the delegate found that the mark, at first instance and without context, did not possess sufficient inherent adaptation to distinguish for prima facie acceptance. Consequently, the delegate considered evidence of use under section 41(5) of the Act. The delegate was persuaded by the extensive evidence of use, including substantial sales figures, widespread distribution, and significant public exposure through various media and promotional activities, such as stamps and licensed merchandise. This evidence demonstrated that the trade mark, in practice, distinguished ARUL's goods.

Ultimately, the delegate concluded that while the trade mark did not have sufficient inherent adaptation to distinguish on its own, the evidence of use established that it did, in fact, distinguish ARUL's goods. Therefore, the delegate accepted the application for registration, subject to the limitations described in the application.