Birkenstock IP GmbH

The matter before the delegate of the Registrar of Trade Marks concerned an application by Birkenstock IP GmbH for the registration of several trade marks. The core of the dispute was the rejection of these applications by the Trade Marks Office on the grounds that the marks were insufficiently adapted to distinguish the designated goods, pursuant to section 41 of the *Trade Marks Act 1995* (Cth). The applicant requested a hearing under section 33(4) of the Act to further argue for the registrability of its marks.

The legal issues before the delegate were whether the trade marks, when considered in light of the evidence of use provided by the applicant, were capable of distinguishing the applicant's goods from those of other traders. This required an assessment of the marks under section 41 of the Act, which involves considering whether a mark is inherently adapted to distinguish the goods, or whether it has acquired distinctiveness through use. The delegate was required to conduct a fresh consideration of these grounds for rejection, rather than merely reviewing the examiner's decision.

In reaching a decision, the delegate considered the principles outlined in *Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd*, which require an initial assessment of whether a trade mark is inherently adapted to distinguish the designated goods. The delegate noted that the applicant did not argue that the marks were inherently adapted to distinguish, but rather that their unique characteristics, when considered in combination, meant they possessed some degree of inherent adaptability under section 41(4). The delegate also took into account an earlier decision where a similar shape mark for the applicant's goods was allowed registration, finding similarities in the evidence presented, while acknowledging that this earlier decision was not binding. The delegate applied the principle that the Registrar must be satisfied on the balance of probabilities that a ground for rejection exists, otherwise the application is presumed registrable.

The delegate found that the evidence of use was sufficient for some of the trade marks but insufficient for others. Consequently, a subset of the trade marks was accepted for possible registration, while others remained subject to rejection.