Featurespace Limited

This decision concerns an application by Featurespace Limited for the acceptance of an International Registration Designating Australia (IRDA) for a trade mark. The application was examined by a delegate of the Registrar of Trade Marks, who had grounds to reject the application. The hearing officer, Nicholas Smith, was tasked with determining whether to accept or reject the IRDA.

The primary legal issue before the hearing officer was whether the trade mark, as examined, contained a direct reference to the character or quality of the goods and services for which it was intended to be registered, thereby constituting a ground for rejection under section 41 of the *Trade Marks Act 1995* (Cth). This required an assessment of the ordinary signification of the trade mark.

The hearing officer found that the trade mark possessed the features identified by Beach J in a previous, unspecified case. However, he disagreed with the Examiner's interpretation, concluding that the trade mark did not have an ordinary signification that directly referred to the character or quality of the Holder's Goods and Services. Applying the principles established in *Cantarella Bros Pty Ltd v Modus Projects Pty Ltd*, the hearing officer determined that the first step of the test for direct reference was not met, and therefore, he did not need to consider the second step. Consequently, the ground for rejection was not established.

As the hearing officer was not satisfied that there were grounds for rejecting the IRDA under section 41 of the Act, he was obliged by Regulation 17A.24 of the *Trade Marks Regulations 1995* (Cth) to accept the IRDA. Accordingly, the IRDA was accepted for possible extension of protection in Australia.