Legal Research
Cases
Laminex Group Pty Limited

Laminex Group Pty Limited

Link copied

Case Copied 10 March 2023 22 min read

Contents

On this page

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 2095624 (classes 6, 19, 20, 21, 35 and 37) – WATERLOO - in the name of Laminex Group Pty Limited

Delegate:

Benjamin Goldsworthy

Representation:

Applicant: Phillips Ormonde Fitzpatrick

Decision:

2023 ATMO 35

Trade Marks Act 1995 (Cth) – s 33 – s 41 trade mark not inherently adapted to distinguish – evidence of use not sufficient – trade mark rejected

Background

On 23 June 2020 (‘Relevant Date’) Laminex Group Pty Limited (‘Applicant’) filed an application under the Trade Marks Act 1995 (Cth) (‘Act’)[1] for registration of a trade mark for the word ‘WATERLOO’ (‘Trade Mark’) for various goods and services outlined below.
Class 6: Aluminium supports for panels; Bar connectors of metal; Bars of metal; Bathroom fittings of common metal; Brackets of metal for furniture; Bumper guards of metal (other than for vehicles); Changing rooms (structures) of metal; Channels of metal for use in constructing framed supports; Clothes hooks of metal; Cupboard fittings of metal; Cupboard fixtures of metal; Door fittings of metal; Door stops of metal; Hardware of metal (small); Hinges of metal; Lock parts of metal; Locks (other than electric) of metal; Metal boards; Metal brackets; Metal cabinets (other than furniture); Metal fittings for buildings; Metal fittings for doors; Metal head channels; Metal locks (non electric); Metal materials for building; Metal materials for construction; Padlocks of metal; Supporting brackets of metal (fixed or articulated)
Class 19: Building materials, not of metal; Chambers (non-metallic structures); Changing rooms (structures) of non-metallic materials; Construction materials, not of metal; Laminates of non-metallic materials for use in building; Non-metallic building partitions; Non-metallic prefabricated structures for use as toilets; Non-metallic screens (partitions) for bathrooms
Class 20: Bench seating; Fixings, not of metal for shelves; Lockers; Non-metallic shelves; Prefabricated shelves; Seating; Shelves made of plastics materials; Vanity unit bases being furniture adapted to support wash hand basins; Vanity units (furniture)
Class 21: Soap dishes; Toilet roll holders; Toilet utensils
(Collectively ‘Designated Goods’)
Class 35: Distribution of goods (not being transport services) and wholesale of goods; Online retail services; Retail services
Class 37: Installation of doors; Installation of fittings for buildings; Installation of locks; Installation of washroom apparatus
(Collectively ‘Designated Services’)
[1] A reference in these reasons to a section is a reference to such in the Trade Marks Act 1995 (Cth) and a reference to a regulation is a reference to such in the Trade Marks Regulations 1995 (Cth).
The Trade Mark was examined under s 31 and on 8 July 2020 the examiner raised a ground for rejection under s 41 of the Act. The basis for the ground of rejection was that the Trade Mark is the name of a number of localities in both Australia and overseas. As such other traders are likely to want to use this term as a place name, for example, describing where their businesses are located or areas that they service. This position was maintained throughout several…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

Keep reading for free

Create a free CaseChat account to read Laminex Group Pty Limited and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2023] ATMO 35
Decision Date: 10 March 2023

CaseChat Overview and Summary

Laminex Group Pty Limited applied to register the trade mark ‘WATERLOO’ for a range of goods including metal and non-metallic building materials, furniture, and bathroom accessories, as well as services related to distribution, retail, and installation. The application was examined and initially rejected by the examiner on the grounds that the trade mark was not inherently adapted to distinguish the applicant's goods and services from those of other persons, pursuant to section 41 of the *Trade Marks Act 1995* (Cth). This decision was made by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the trade mark ‘WATERLOO’ was capable of distinguishing the applicant's designated goods and services from those of other traders. This required an assessment of the trade mark's inherent adaptation to distinguish, and if that adaptation was insufficient, whether it had, in fact, come to distinguish the applicant's goods and services through use. The delegate was required to consider the ordinary signification of the word ‘WATERLOO’ and the likelihood that other traders would have a legitimate desire to use the term to describe their own goods and services, based on its ordinary meaning.

The delegate reasoned that the ordinary signification of ‘WATERLOO’ to relevant persons in Australia was likely to refer to the inner-city suburb of Sydney. Applying established legal principles, particularly from cases like *Clark Equipment Company v Registrar of Trade Marks* and *Henley Arch Pty Ltd v Henley Constructions Pty Ltd*, the delegate found that geographical names are often not inherently adapted to distinguish goods or services, especially if other traders have a legitimate interest in using the name descriptively. The delegate concluded that it was reasonable to suppose that goods or services similar to those designated by Laminex could originate from or be associated with a location like Waterloo, and therefore, other traders would likely have a legitimate desire to use the name. The evidence provided by the applicant was deemed insufficient to overcome this lack of inherent distinctiveness.

Consequently, the delegate was satisfied that the trade mark ‘WATERLOO’ was not inherently adapted to distinguish the designated goods and services, and that other traders would likely wish to use the term for its ordinary signification. Therefore, the application for registration of the trade mark was rejected.

Orders