Exotic Products Pty Ltd, Re

This matter concerns an application by Exotic Products Pty Ltd for registration of a trade mark in Part A of the Register. The applicant sought to register a mark, which included the word "EXOTIC", in respect of "heaters including aquarium heaters; and all other goods in this class". The examiner raised objections, including a requirement for a disclaimer of the word "EXOTIC" on the basis of its descriptive significance. The applicant argued that the word was not warranted as a disclaimer because it had no direct reference to the character or quality of the goods.

The legal issue before the delegate was whether the word "EXOTIC" was a disclaimable element of the trade mark. This required consideration of the purpose of disclaimers, which is to define the scope of rights afforded by registration and prevent the proprietor from claiming exclusive rights to matter that should be available for use by other traders. The delegate also considered the potential for uncertainty and embarrassment to other traders and the public if exclusive rights were asserted over descriptive terms.

The delegate reasoned that the word "EXOTIC" has dictionary meanings that describe attributes of goods, such as being from another country, strikingly unusual, or rich and elaborate in appearance. These meanings indicate that the word could be used by other traders to laud or describe the characteristics of similar goods, whether relating to their origin, appearance, or design. Applying the principle that a disclaimer should be required when an applicant is not entitled to the exclusive use of a part of a mark that is likely to be regarded as an essential feature, the delegate concluded that "EXOTIC" was not a distinctive particular and fell within the category of matter that is common to the trade or otherwise not distinctive.

Consequently, the delegate determined that a disclaimer of the exclusive use of the word "EXOTIC" would be necessary before the trade mark could proceed to acceptance. The applicant was granted one month from the date of the decision to consent to such a disclaimer, failing which the application would be refused.