J. McGloin Pty Limited, Re

This matter concerns Trade Mark Application No. B479577, lodged by J. McGLOIN PTY LIMITED, seeking registration of the mark ORAL-FRESH for goods including mouth washes and mouth fresheners in Class 3. The application was initially objected to by the examiner on the grounds that the mark directly described the goods, citing paragraphs 24(1)(c), (d), and (e) of the Trade Marks Act. The applicant's attorney argued that the word "FRESH" had multiple meanings, and when combined with "ORAL," no specific meaning could be definitively attributed, rendering any inference indirect. The examiner maintained the objection, asserting that the mark's meaning in the context of the goods was descriptive. The applicant subsequently requested the mark be transferred to Part B of the Register, arguing it was capable of becoming distinctive through use.

The delegate was required to determine whether the trade mark ORAL-FRESH was registrable in Part B of the Register. This involved assessing whether the mark possessed inherent adaptability to distinguish the applicant's goods and whether it had acquired distinctiveness in fact through use. The delegate considered the criterion for inherent adaptability to distinguish, as articulated in *Clark Equipment Co v Registrar of Trade Marks*, which focuses on the likelihood of other traders needing to use the words in connection with similar goods. The delegate also had to consider the principles regarding the capacity of a mark to become distinctive, as explained in *Burger King Corp. v Registrar of Trade Marks*.

The delegate reasoned that the words "ORAL" and "FRESH" both directly related to the goods in question, with "ORAL" pertaining to the mouth and "FRESH" meaning refreshing. The delegate found that the combination of these words, when applied to mouth washes and fresheners, would be readily understood by the ordinary person as descriptive of the goods' function. The delegate concluded that the combination lacked the necessary degree of invention to be considered inherently distinctive, drawing upon the principles from *Eastman Photographic Materials Co Ltd's application* and *Keystone Knitting Mills application*. Furthermore, the delegate found the evidence of use insufficient to establish distinctiveness in fact, noting that the sales figures for the goods were not substantial given the market size. Applying the principle from *Burger King*, the delegate held that even if the mark had acquired distinctiveness in fact, its inherent non-distinctiveness meant it was not capable of becoming distinctive under section 25 of the Act.

Consequently, the delegate found that the trade mark ORAL-FRESH failed to qualify for registration under section 25 of the Act and was therefore not registrable in Part B of the Register. The application was refused.