Cooper Tools Pty Ltd, Re

This matter concerned an application by Cooper Tools Pty Ltd for registration of the trade mark SUPER TRU-TIP in Part A of the Register for "screwdrivers". The application was objected to by the examiner on grounds including that the mark had a direct reference to the character or quality of the goods, and that it was deceptively similar to a pending application for the mark TRUTIP and TRU-TIP. The applicant sought to overcome these objections by submitting evidence of acquired distinctiveness through use and requested the application be transferred to Part B of the Register.

The delegate was required to determine whether the mark SUPER TRU-TIP was registrable. This involved assessing whether the mark had a direct reference to the character or quality of screwdrivers, and whether it was deceptively similar to the cited marks. Furthermore, the delegate had to consider whether the mark possessed inherent distinctiveness or had acquired distinctiveness through use, as required for registration in Part A or Part B of the Register respectively.

The delegate found the objection based on deceptive similarity to the cited marks to be valid, noting that the marks shared the words TRU and TIP, with "SUPER" being a laudatory and non-distinctive element. Regarding the direct reference to character or quality, the delegate applied the principles from *Clark Equipment Company v Registrar of Trade Marks* and *Mark Foy's Ltd v Davies Coop & Co Ltd*, concluding that the words "TRU-TIP" directly described screwdrivers as having an accurate or superior tip. Despite evidence of use since 1975, the delegate found this insufficient to establish acquired distinctiveness, particularly given the mark's inherently descriptive and laudatory nature. The delegate considered the evidence of use inadequate to outweigh the mark's inability to distinguish the goods, referencing *Burger King* in support of the principle that descriptive or laudatory epithets are generally refused registration.

Consequently, the delegate refused the application for registration of the trade mark SUPER TRU-TIP, both on the grounds of direct reference to the character or quality of the goods and for being deceptively similar to the cited marks.