Garrett Electronics Inc

This matter concerns the decision of a delegate of the Registrar of Trade Marks regarding the acceptance or rejection of two International Registration Designations of Australia (IRDA) applications, IRDA 1587494 and 1587495. The delegate was tasked with determining whether to accept these IRDA applications, or reject them, in accordance with relevant regulations and sections of the *Trade Marks Act 1995* (Cth).

The primary legal issue before the delegate was whether the trade marks, identified by the surname "Garrett," were inherently adapted to distinguish the applicant's goods or services from those of other persons, as required by section 41 of the *Trade Marks Act 1995*. This involved considering whether the surname was common and whether other traders might wish to use it in their ordinary course of trade, irrespective of the probability of such use.

The delegate reasoned that the test for inherent adaptability under section 41 does not depend on the likelihood of other traders actually wishing to use a common surname, but rather on whether they *might* wish to do so. Relying on established case law, the delegate explained that common surnames are to be kept free from monopolisation. Therefore, despite the applicant's submissions that few individuals with the surname "Garrett" would likely engage in the business of manufacturing metal detectors, the delegate found that the Office could not assume that none of the 1983 Australian residents with that surname might wish to use it in their trade. The delegate concluded that the grounds for refusal were not based on mere speculation but on long-held legal principles concerning the distinctiveness of common surnames.