Cling Adhesive Products Pty Ltd, Re

This matter concerns an application by Cling Adhesive Products Pty Ltd for the registration of the trade mark MASK-IT in relation to a plastic pull-down drop sheet with a strip of masking tape along one edge. An examiner objected to the mark's registrability under paragraphs 24(1)(c), (d), and (e) of the Act, asserting that the mark directly described the character or quality of the goods by indicating their use for masking surfaces. Despite submissions from the applicant's attorney, including evidence of use, the examiner maintained the objection, concluding the mark was unsuitable for registration in either Part A or Part B of the Register. The applicant waived its right to a hearing, and the decision was made on the written record.

The primary legal issues before the delegate of the Registrar of Trade Marks were whether the mark MASK-IT was inherently adapted to distinguish the applicant's goods from those of other traders, and whether it had acquired distinctiveness in fact through use. For registration in Part A, a mark must be distinctive, meaning it is adapted to distinguish the goods of one proprietor from similar goods of other traders. Registration in Part B depends on whether the mark would, at some future time, satisfy the requirements of sub-section 26(2) based on inherent distinctiveness and distinctiveness in fact.

The delegate reasoned that the word "mask" has a well-established meaning related to concealing or protecting surfaces, particularly in the building and painting industries, and the word "it" refers to the object being covered. Consequently, the combination MASK-IT would be understood by ordinary persons, and especially by those in relevant trades, as descriptive of the goods' function. The delegate rejected the argument that the combination was uncommon or novel, drawing parallels with everyday instructional phrases. Applying the criterion that a mark is generally refused if no other trader would desire to use it without improper motive, the delegate found the mark failed to qualify for registration under paragraph 24(1)(d). While acknowledging substantial sales and advertising expenditure, the delegate held that any evidence of factual distinctiveness was outweighed by the mark's inherent lack of distinctiveness, citing established legal principles that descriptive epithets, even if proven distinctive in fact, will generally be refused registration.

Ultimately, the delegate concluded that the applicant's mark was so lacking in inherent distinctiveness that no amount of evidence could overcome the objection. Therefore, the application failed to qualify for registration under sections 24 and 25 of the Act, and the application was refused.