Estee Lauder Cosmetics Limited

Estee Lauder Cosmetics Limited applied to register the word "beautiful" as a trade mark for perfumery, essential oils, and cosmetics. The examiner objected to the application on the grounds that the word was descriptive of the character or quality of the goods and lacked the inherent capacity to distinguish Estee Lauder's goods from those of other traders. Despite submissions and further evidence, the examiner maintained the objection, leading Estee Lauder to seek a hearing before the Registrar of Trade Marks.

The Registrar was required to determine whether the trade mark "beautiful" was capable of distinguishing Estee Lauder's designated goods from those of other persons, as mandated by section 41 of the *Trade Marks Act 1995*. This involved first considering the extent to which the mark was inherently adapted to distinguish the goods. If the Registrar remained unable to decide, the provisions of subsection 41(5) or 41(6) would apply, depending on whether the mark possessed some inherent adaptability to distinguish or none at all.

The Registrar reasoned that the word "beautiful" is a common laudatory term, universally understood and frequently used in the perfume industry to describe fragrances. Applying the principle established in *Clark Equipment Co v Registrar of Trade Marks*, which holds that a mark is not inherently adapted to distinguish if other traders are likely to desire to use it in the ordinary course of their business for its ordinary signification, the Registrar found that "beautiful" is not inherently adapted to distinguish. The Registrar noted that the more apt a word is to describe goods, the less inherently apt it is to distinguish them, and concluded that "beautiful" is a word that other traders would legitimately wish to use to describe and promote their own perfumery, essential oils, and cosmetics. Consequently, the Registrar determined that the trade mark must meet the requirements of subsection 41(6), which necessitates proof of factual distinctiveness at the filing date.

The Registrar found that the evidence provided did not establish that the trade mark "beautiful" distinguished Estee Lauder's goods as being those of the applicant at the time of filing. Therefore, the Registrar concluded that the trade mark was not capable of distinguishing the designated goods and ordered that the application be rejected.