International Registration 1412961 (21, 25, 30, 43) - Australian Trade Mark Application number 1941867 (21, 25, 30, 43) – RALPH’S COFFEE- in the name of The Polo/Lauren Company L.P.

This matter concerned an application by The Polo/Lauren Company L.P. for an extension of protection to Australia for its international trade mark application number 1941867, designated as RALPH’S COFFEE, in relation to goods and services across various classes. The dispute arose from the Registrar's decision to reject the application in part, specifically for goods and services outside of class 25. The hearing was conducted by Nicholas Smith, Hearing Officer.

The primary legal issue before the Hearing Officer was whether the trade mark RALPH’S COFFEE was capable of distinguishing the applicant's goods and services from those of other persons, as required by section 41 of the *Trade Marks Act 1995* (Cth). This involved considering whether the mark was inherently adapted to distinguish the designated goods and services, and if not, whether use of the mark had, in fact, led to such distinction. The Hearing Officer was required to make a fresh consideration of this ground for rejection, rather than reviewing the examiner's prior decision.

The Hearing Officer reasoned that the trade mark RALPH’S COFFEE was not inherently adapted to distinguish the applicant's goods and services, other than those in class 25. Applying section 41(4) of the Act, the Hearing Officer found that the evidence of past and intended use, along with any other circumstances, did not demonstrate that the mark did or would distinguish the applicant's goods and services from those of other traders. Consequently, the Hearing Officer was satisfied that a ground for rejection existed and that the applicant had not overcome it.

The Hearing Officer ordered that the extension of protection would proceed in Australia for the applicant's goods in class 25. However, for the applicant's goods and services in all other classes, the application for extension of protection was rejected in accordance with regulation 17A.24 of the Regulations. The Hearing Officer also directed that if a notice of appeal was served within one month of the decision, the disposition of the application would be in accordance with the Court's subsequent direction or order.