M2 Technology Pty Ltd v Messages on Hold Pty Ltd

This matter came before the delegate of the Registrar of Trade Marks, concerning an application by M2 Technology Pty Ltd for registration of the trade mark MESSAGES ON HOLD. The opponent, Messages on Hold Pty Ltd, opposed the registration on grounds relating to sections 41, 58, and 62 of the *Trade Marks Act 1995* (Cth). The dispute centred on whether the term MESSAGES ON HOLD was capable of distinguishing the applicant's goods and services, and whether the applicant was the true owner of the trade mark.

The primary legal issues before the delegate were: (1) whether the trade mark MESSAGES ON HOLD was inherently adapted to distinguish the applicant's goods and services, as required by section 41 of the Act; (2) whether the applicant had established that the trade mark had, in fact, come to distinguish the applicant's goods and services through use prior to the filing date, pursuant to section 41(6); and (3) whether the opponent had established prior use of the trade mark, which would impact the applicant's claim to ownership under sections 58 and 62.

The delegate considered the evidence presented by both parties, including statutory declarations. In relation to section 41, the delegate referred to the principles outlined in *Blount Inc v Registrar of Trade Marks*, which govern the Registrar's assessment of a trade mark's inherent capacity to distinguish. The delegate noted that if a trade mark is not inherently adapted to distinguish, the applicant must demonstrate that it has acquired distinctiveness through use. The opponent argued that the term MESSAGES ON HOLD was either generic or that they had prior use, challenging the applicant's claim to ownership and distinctiveness.