Fry Consulting Pty Ltd v Sports Warehouse Inc

Fry Consulting Pty Ltd (the opponent) opposed the application by Sports Warehouse Inc (the applicant) for registration of a trade mark. The dispute concerned the registrability of the trade mark under section 41 of the *Trade Marks Act 1995* (Cth). The decision was made by Debrett Lyons, a Hearing Officer in the Trade Marks Hearings.

The primary legal issue before the Hearing Officer was whether the applicant's trade mark was capable of distinguishing the applicant's goods or services from those of other traders, as required by section 41 of the Act. This involved assessing the inherent capacity of the trade mark to distinguish, and if found to lack such inherent capacity, considering whether it had acquired the capacity to distinguish through use. The Hearing Officer was required to consider the extent to which the trade mark was inherently adapted to distinguish, taking into account the likelihood that other traders might legitimately desire to use the same or a similar mark in the ordinary course of their businesses.

The Hearing Officer applied the principles established in cases such as *Blount v Registrar of Trade Mark* and *Clark Equipment Co. v Registrar of Trade Marks*. The reasoning focused on the inherent distinctiveness of the trade mark, considering whether it was the kind of mark that other traders might reasonably wish to use for their own goods or services without improper motive. The Hearing Officer found that the trade mark lacked the inherent capacity to distinguish.

The opposition was therefore upheld on the ground of section 41. The Hearing Officer ordered that the applicant pay the opponent's costs according to the official scale.