General Motors Corporation

This matter concerns trade mark application number 774124, filed by General Motors Corporation, a Delaware company, seeking registration of the word "satnav" for goods including electric and electronic components for motor vehicles, computers and software for motor vehicles, and tracking and location devices for motor vehicles. The examiner objected to the application on the grounds that "satnav" is a descriptive abbreviation of "satellite navigating" or "satellite navigator," a term other traders would likely need to use to describe similar goods.

The delegate of the Registrar of Trade Marks was required to determine whether the trade mark "satnav" was capable of distinguishing the applicant's goods from those of other persons, as mandated by section 41(2) of the *Trade Marks Act 1995*. In making this determination, the delegate had to consider the extent to which the trade mark was inherently adapted to distinguish the designated goods, in accordance with section 41(3) of the Act and the precedent established in *Clark Equipment Company v Registrar of Trade Marks*.

The delegate reasoned that the essential question was whether other traders would likely wish to use the term "satnav" to describe their tracking and location devices. Given that "satnav" is a known abbreviation for "satellite navigation," a system that uses satellite signals for locating and tracking, the delegate found that the term would be understood by the public to refer to devices providing a means of fixing terrestrial location via satellite. The delegate noted that details of the generic use of "satnav" had been provided to the applicant's attorney. As "satnav" has a known meaning in relation to the designated goods and is apt to describe them, and in the absence of any submissions from the applicant regarding factual distinctiveness or other provisions of section 41, the delegate concluded that the trade mark was not capable of distinguishing the applicant's goods.

Consequently, the delegate was satisfied that the trade mark "satnav" was not capable of distinguishing the applicant's goods from those of other persons and, pursuant to section 41(2) of the Act, rejected the application for registration.