International Registration Designating Australia number 1980757 (International Registration number 1441500) (classes 10,20,27,35) - - in the name of PTM Guard SIA

This matter concerned an application for an international registration designating Australia (IRDA) number 1980757, filed in the name of PTM Guard SIA. The dispute arose from the Registrar's decision to refuse the extension of protection of the trade mark to Australia. The hearing officer, M. Cooper, was required to determine whether grounds existed for rejecting the IRDA.

The central legal issue was whether the trade mark, a three-dimensional representation of a lotus blossom with 24 cone-shaped petals, was capable of distinguishing the applicant's goods and services, namely acupressure mats, pillows, and related retail and marketing services. This involved an assessment under section 41 of the *Trade Marks Act 1995* (Cth), which requires a trade mark to be capable of distinguishing the applicant's goods or services from those of other persons. The court considered whether the mark was inherently adapted to distinguish and, if not, whether use of the mark had resulted in it actually distinguishing the goods and services.

The hearing officer found that the trade mark was not inherently adapted to distinguish the designated goods and services. While the applicant had provided evidence of use in Australia since 2014, along with registrations in other countries and a design registration in Australia, these factors were deemed insufficient to overcome the lack of inherent adaptability. The court applied the principles from *Chocolaterie Guylian N.V. v Registrar of Trade Marks* and noted that a design registration does not automatically equate to a trade mark being adapted to distinguish. The evidence of use and other circumstances did not, in the court's view, establish that the trade mark actually distinguished the goods and services as being those of the applicant.

Consequently, the hearing officer was satisfied that grounds for rejection existed under regulation 17A.24 of the *Trade Marks Regulations 1995* (Cth). The application for extension of protection to Australia for IRDA number 1980757 was therefore refused.