Business Enterprise Mersey, Inc

This matter concerned trade mark application number 1024006, filed by Business Enterprise Mersey, Inc. The applicant sought to register the trade mark BUSINESS & EMPLOYMENT for services including employment services, recruitment, community work projects, business welfare, and education and training. An examiner objected to the registration, raising grounds for rejection under subsection 41(6) of the *Trade Marks Act 1995* (Cth), asserting that the phrase was entirely descriptive of the services and lacked the inherent capacity to distinguish.

The delegate was required to determine whether the trade mark BUSINESS & EMPLOYMENT, as applied for and subsequently amended, was inherently adapted to distinguish the applicant's services from those of other traders. If not, the delegate had to consider whether sufficient evidence of use had been provided to establish that the trade mark had, in fact, come to distinguish the services by virtue of its use prior to the filing date. The delegate also had to assess the impact of the applicant's proposed limitations, specifically restricting the trade mark to the colours red, white, and blue, and to the state of Tasmania.

The delegate applied established legal principles regarding the inherent capacity of trade marks to distinguish, referencing cases such as *Clark Equipment Co v Registrar of Trade Marks* and *Registrar of Trade Marks v W & G Du Cros Ltd*. It was held that the words BUSINESS & EMPLOYMENT were inherently descriptive and lacked any capacity to distinguish the services. The delegate found that the addition of an ampersand, underlining, and the proposed colour limitations (red, white, and blue) did not confer any inherent distinctiveness, as these were common elements unlikely to be perceived as distinctive by consumers. The geographical limitation to Tasmania was also deemed insufficient to establish inherent distinctiveness. Consequently, the delegate concluded that the trade mark, even with the proposed limitations, was devoid of inherent capacity to distinguish.

As the trade mark was found to be devoid of inherent capacity to distinguish, the delegate then considered whether the applicant had established distinctiveness through use under subsection 41(6) of the Act. Despite evidence of sales and promotion in Tasmania since 2002, the delegate found the evidence insufficient to demonstrate that the words BUSINESS & EMPLOYMENT were being used as a trade mark or were perceived as such by users of the services at the filing date of 7th October 2004. The delegate noted inconsistencies in the colour usage in the evidence presented, which undermined claims of distinctiveness based on colour. Accordingly, the application was rejected under subsection 41(2) of the Act.