Evenglen Pty Ltd Trading as Mister Plywood, Re

This matter concerned an application by Evenglen Pty Ltd trading as Mister Plywood to register the word FLAMESAFE as a trade mark in Part A of the Register for goods including notice boards and display boards. The examiner objected to the application under paragraphs (c), (d), and (e) of sub-section 24(1) of the *Trade Marks Act 1955* (the old Act), on the basis that the mark directly referred to the quality of the goods being safe against or resistant to fire or heat. The application was heard by a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the trade mark FLAMESAFE was inherently adapted to distinguish the applicant's goods, or whether it had become capable of distinguishing them through use, as required for registration under the *Trade Marks Act 1955*. Specifically, the delegate had to consider the mark's registrability under the *Trade Marks Act 1995* (the new Act), which applied to pending applications. Under the new Act, the delegate had to determine if the trade mark was capable of distinguishing the applicant's goods from those of other persons, taking into account its inherent adaptability to distinguish and the extent of its use or intended use, along with any other relevant circumstances.

The delegate reasoned that the mark FLAMESAFE, a combination of "flame" and "safe," directly described a characteristic of the goods, namely fire resistance. While the applicant argued that the mark was capable of becoming distinctive through use, the delegate found the evidence of use insufficient. Sales figures and advertising expenditure were limited to a specific region and a narrow range of goods. Applying the principles from cases such as *Clark Equipment Co v Registrar of Trade Marks*, the delegate concluded that the mark had a low level of inherent distinctiveness and that the evidence did not demonstrate it had become capable of distinguishing the applicant's goods. The delegate was not satisfied that the mark did or would distinguish the applicant's goods.

Consequently, the delegate rejected the application for registration of the trade mark FLAMESAFE under sub-sections 33(3) and (4) of the *Trade Marks Act 1995*.