Den Norske Stats Oljeselskap as, Re

An application was made by Den Norske Stats Oljeselskap A.S, a Norwegian company, to register the trade mark "InstanSeal" for goods in Class 1 (chemical products for industrial purposes, etc.) and Class 17 (sealing agents and materials, etc.), and services in Class 37. The examiner objected to the registration on the grounds that the mark was descriptive, being the phonetic equivalent of "Instant Seal," a term likely to be used by other traders to describe their sealing products or repair services. The applicant offered to limit the designated goods and services, but this did not overcome the objection. The decision was made by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the trade mark "InstanSeal" was capable of distinguishing the applicant's goods and services from those of other persons, as required by section 41 of the *Trade Marks Act 1995* (Cth). This involved assessing the inherent adaptability of the mark to distinguish, and if that was insufficient, considering the use of the mark or any other circumstances that might demonstrate its capacity to distinguish.

The delegate reasoned that the words "Instant" and "Seal" are common English words with descriptive meanings relevant to the designated goods and services. While "InstanSeal" is a misspelling and elision of these words, it is phonetically and visually very close to the descriptive term "Instant Seal." Consequently, the delegate found that the mark had only a minor degree of inherent adaptability to distinguish and fell within the scope of section 41(5) of the Act. The delegate considered the applicant's submission regarding acceptance of the mark in the United Kingdom as an "other circumstance," but concluded that this, standing alone, was insufficient to satisfy the delegate that the mark was capable of distinguishing the applicant's goods and services in Australia, particularly given the low level of inherent distinctiveness and the absence of evidence of use in Australia.

Accordingly, the delegate was not satisfied that the trade mark "InstanSeal" was capable of distinguishing the applicant's goods and services from those of other persons. Therefore, pursuant to section 41(2) of the *Trade Marks Act 1995*, the delegate rejected the application for registration.