Karen Jane Phillips v Global Creatrix Pty Ltd

This matter concerned an opposition by Karen Jane Phillips to the registration of the trade mark "INSTITUTE OF WOMEN" (application number 1865808) by Global Creatrix Pty Ltd, in classes 41 and 44. The opposition was brought before Katrina Brown, a Hearing Officer for the Registrar of Trade Marks.

The primary legal issue before the Hearing Officer was whether the trade mark "INSTITUTE OF WOMEN" was capable of distinguishing the applicant's services from those of other persons, as required by section 41 of the *Trade Marks Act 1995* (Cth). This involved assessing whether the trade mark was inherently adapted to distinguish the services, and if not, whether use of the trade mark prior to the filing date had resulted in it actually distinguishing the services as being those of the applicant.

The Hearing Officer found that the words "INSTITUTE OF WOMEN" were "utterly devoid of the capacity to distinguish" the applicant's services. While the applicant had provided evidence of use of the trade mark, including in stylised forms with additional elements such as a device and the tagline "Life without limitation," the Hearing Officer determined that these stylised forms did not constitute use of the trade mark as applied for. The use of the stylised forms, which included additions that substantially affected the identity of the mark, did not assist in demonstrating that the plain words "INSTITUTE OF WOMEN" had, in fact, distinguished the applicant's services at the filing date. Consequently, the ground of opposition under section 41 of the Act was established.

As the opposition under section 41 had been established, the Hearing Officer refused to register the trade mark. Costs were awarded against the applicant in accordance with the usual practice.