Franchise Legal Pty Limited - [2025] ATMO 137

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReTrade mark application number 2410395 (45) – Franchise Legal – in the name of Franchise Legal Pty Limited

Delegate: Nicholas Smith

Representation: Applicant: Campbell Thompson of Counsel instructed by Ilya Furman of Franchise Legal Pty Limited

Decision: 2025 ATMO 137
Request to be heard under section 33(4) of the Trade Marks Act 1995 (Cth) in relation to ground for rejection under section 41 of the Act – section 41 considered – trade mark is not to any extent inherently adapted to distinguish the designated services – insufficient evidence of use supplied – trade mark application rejected
Background
1. On 4 December 2023, Franchise Legal Pty Limited (‘Applicant’) applied to register the trade mark detailed below under the Trade Marks Act 1995 (Cth):

Application Number:

2410395

Filing Date:

4 December 2023

Services:

Class 45: Professional legal consultations relating to franchising

(‘Applicant’s Services’)

Trade Mark:

Franchise Legal

(‘Trade Mark’)

Unless otherwise indicated, any references to sections or regulations in this decision are references to sections or regulations of the Trade Marks Act 1995 (Cth) (‘Act’) or the Trade Marks Regulations 1995 (Cth) (‘Regulations’), respectively.
The Trade Mark was duly examined under s 31 and a ground for rejection under s 41 was identified by the examiner. The examiner stated (paraphrased), that the Trade Mark consisted of the words Franchise Legal, which refers to providing legal services in the area of franchising being ‘an authorisation granted by a government or company to an individual or group enabling them to carry out specified commercial activities’. As such the Trade Mark acts to describe the services offered rather than as a badge of trade origin. Other traders may desire to be able to use the Trade Mark in connection with the Applicant’s Services.[1]
[1] The Adverse Examination Report also identified formalities issues and an issue under s 44, however each of these issues has been resolved over the course of the examination process and I do not need to consider these issues.
On 8 March 2024 the Applicant responded to the rejection, attaching a declaration of Ilya Furman, Director of the Applicant, with Annexures A to U made on 5 March 2024. This material was insufficient to persuade the examiner, who issued a further examination report on 9 April 2024 maintaining the s 41 ground for rejection in respect of the Applicant’s Services. Over the course of the last year the Applicant has provided 4 additional declarations providing evidence of use of the Trade Mark as well as submissions on the s 41 ground for rejection. This material was insufficient to persuade the examiner, who issued 4 further reports maintaining the s 41 ground. The Applicant then requested to be heard by the Registrar of Trade Marks under s 33.
This matter was listed for hearing on 3 June 2025. The Applicant was represented by Campbell Thompson of…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2025] ATMO 137
Decision Date: 15 July 2025

CaseChat Overview and Summary

The applicant, Franchise Legal Pty Limited, sought to register the trade mark "FRANCHISE LEGAL". The dispute concerned whether this trade mark had acquired distinctiveness in the Australian market for franchise legal services. The decision was made by Nicholas Smith.

The court was required to determine whether the trade mark "FRANCHISE LEGAL" had acquired distinctiveness in fact at the filing date, such that consumers in the relevant market would recognise it as a badge of origin for the applicant's services, rather than merely a descriptive term. This involved assessing whether the mark uniquely identified the franchise legal services provided by the applicant.

The court reasoned that while the applicant operated a successful law firm and advertised extensively, the evidence did not establish that the Australian-wide market for franchise legal services had been educated to recognise the trade mark as connoting the applicant specifically. Despite 14 years of operation and website use, the court found that the limited annual turnover and the lack of broad consumer appreciation beyond customer testimonials and media articles meant the mark had not achieved distinctiveness as a matter of fact. The court applied section 41 of the relevant Act, concluding that the evidence was insufficient to satisfy the requirements for distinctiveness.

Consequently, the application to register the trade mark was rejected under section 41.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

The market for the Applicant’s Services is a broad national one consisting of a wide range of actual and potential franchisors and franchisees in a variety of different businesses. I am not satisfied that the Applicant’s evidence establishes anything other than the fact that the Applicant is a successful 1-2 lawyer law firm operating in Melbourne (while it provides services to clients outside Victoria a review of its client list indicates that over 90% of its client base is Victorian) under the Trade Mark for 14 years including operating a website from Notwithstanding the extensive Google advertising engaged in by the Applicant and evidence of organic search results, I am not satisfied that the market for the Applicant’s Services, which is Australia-wide, has been educated to recognise the Trade Mark as connoting the Applicant rather than for its descriptive meaning. While the Trade Mark is not necessarily a trade mark (such as ‘soap’) for which no amount of use could possibly result in the term becoming distinctive, given the size of the market (actual and prospective franchisors and franchisees throughout Australia), the limited annual turnover and the lack of evidence of broad consumer appreciation of the Trade Mark in that market (beyond a set of customer testimonials and media articles) means that I am not satisfied that at the filing date, the consumers in the market for the Applicant’s Services regarded the Trade Mark alone as a badge of origin separate from its descriptive nature; i.e. that the mark uniquely identifies the franchise legal services provided by the Applicant. In my evaluative judgement, the evidence before me is insufficient to satisfy me that the descriptive trade mark FRANCHISE LEGAL had achieved distinctiveness as a matter of fact at the relevant date. As such the application to register the Trade Mark must be rejected under s 41.[16] Over the course of the examination process and as part of the Applicant’s Submissions, there were considerable questions raised about whether the Applicant’s use of Franchise Legal as part of a composite mark was relevant to the question of whether it had acquired distinctiveness in the Trade Mark. There were also questions about whether the Applicant was using the Trade Mark descriptively. It is not necessary to decide these questions. For the purposes of reaching my conclusion I have taken the Applicant’s evidence of use (and its submissions about the impact of that use on the distinctiveness of the Trade Mark) at its highest and even then conclude that the Trade Mark does not satisfy the requirements under s 41(3)(b).Decision24. Section 33 relevantly provides:33Application accepted or rejected(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:(a)the application has not been made in accordance with this Act; or(b)there are grounds under this Act for rejecting it.(2)The Registrar may accept the application subject to conditions or limitations.(3)If the Registrar is satisfied that:(a)the application has not been made in accordance with this Act; or(b)there are grounds under this Act for rejecting it;the Registrar must reject the application.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

Delegate:	Nicholas Smith
Representation:	Applicant: Campbell Thompson of Counsel instructed by Ilya Furman of Franchise Legal Pty Limited
Decision:	2025 ATMO 137 Request to be heard under section 33(4) of the Trade Marks Act 1995 (Cth) in relation to ground for rejection under section 41 of the Act – section 41 considered – trade mark is not to any extent inherently adapted to distinguish the designated services – insufficient evidence of use supplied – trade mark application rejected

Application Number:	2410395
Filing Date:	4 December 2023
Services:	Class 45: Professional legal consultations relating to franchising (‘Applicant’s Services’)
Trade Mark:	Franchise Legal	(‘Trade Mark’)