Grande Brasserie Alsacienne d'Adelshoffen, Re

This matter concerns a trade mark application by Grande Brasserie Alsacienne d’Adelshoffen for the words "THE DIFFERENT STOUT". The applicant, a French company, sought to register the mark for brown and dark ales and beers. The examiner objected to the application, initially under section 24 of the Trade Marks Act 1955 and subsequently under section 41 of the Trade Marks Act 1995, on the grounds that the words directly refer to the character and quality of the goods, describing them as different from other stouts, and are therefore words that other traders are entitled to use. A hearing was requested and conducted before a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the application for the trade mark "THE DIFFERENT STOUT" should be rejected. Specifically, the delegate had to determine if the mark was inherently adapted to distinguish the applicant's goods from those of other traders, as required by section 41 of the Trade Marks Act 1995. This involved considering the shift in approach under the new Act, which introduces a presumption of registrability, meaning doubt is resolved in favour of the applicant, contrasting with the previous Act where the onus was on the applicant to demonstrate registrability.

The delegate reasoned that the new Trade Marks Act 1995, particularly section 33(1), establishes a presumption of registrability, requiring the Registrar to accept an application unless satisfied there are valid grounds for rejection. This contrasts with the repealed Act, where the Registrar needed to be satisfied there was no lawful ground of objection, and doubt was resolved against the applicant. The delegate acknowledged the applicant's argument that "THE DIFFERENT STOUT" is inherently adapted to distinguish, contending it vaguely suggests difference without describing specific qualities. However, the delegate referred to the established test for "adapted to distinguish," which considers the likelihood of other traders wanting to use the words honestly to describe their own goods. The delegate noted that section 41 of the new Act continues to require the mark to be capable of distinguishing, with a primary consideration being its inherent adaptability to distinguish.

The delegate found that the words "THE DIFFERENT STOUT" are descriptive of the character and quality of the goods, indicating they are different from other stouts. This descriptive nature means other traders are entitled to use such language to describe their own products. Consequently, the mark was not considered inherently adapted to distinguish the applicant's goods. The delegate concluded that the objection under section 41 of the Trade Marks Act 1995 was valid, and the application for registration was rejected.