Laminex Group Pty Limited

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.