International Registration Designating Australia number 1483631 (Australian trade mark number 2031986) and International Registration Designating Australia number 1493741 (Australian trade mark number 2045849) in...

The matter before the delegate of the Registrar of Trade Marks concerned two international registrations designating Australia, which corresponded to Australian trade mark numbers 2031986 and 2045849. The applicant, referred to as the Holder, sought registration for these marks, which depicted a three-dimensional configuration of a mobile device grip. The dispute arose during the examination process, where the delegate formed the view that the marks were not capable of distinguishing the applicant's goods.

The primary legal issue before the delegate was whether the trade marks, as applied for, were capable of distinguishing the applicant's goods from the goods of other persons, as required by section 41 of the *Trade Marks Act 1995* (Cth). This involved determining whether the shape of the mobile device grip, as depicted in the trade marks, was dictated by its function or utilitarian purpose, or if it possessed distinctive aesthetic features that would allow it to function as a trade mark.

The delegate reasoned that the evidence, particularly the declaration from the Holder's CEO, indicated that the design embodied in the trade marks was chosen for aesthetic reasons and that numerous alternative shapes were equally effective and feasible from a functional and cost perspective. The delegate noted that the CEO stated that the utilitarian or functional advantages of the product were not dependent on the specific design of the trade marks. Furthermore, the delegate observed that the applicant had provided examples of other grips, stands, and mounts with different designs that performed similar functions. Applying the principles of section 41, the delegate concluded that the trade marks were not capable of distinguishing the applicant's goods because their shape was primarily dictated by function and aesthetics, rather than serving as an indicator of trade origin.

Consequently, the delegate rejected the international registrations designating Australia for all goods.