Mad Mex International Pty Ltd

Mad Mex International Pty Ltd sought a hearing under section 33(4) of the *Trade Marks Act 1995* (Cth) concerning grounds for rejection of its trade mark application. The dispute involved grounds for rejection under sections 41 and 44 of the Act. The ground for rejection under section 44 was withdrawn by the applicant. The hearing was conducted by Blake Knowles, a delegate of the Registrar of Trade Marks, based on written submissions and the material on file.

The legal issues before the delegate were whether the trade mark was inherently adapted to distinguish the applicant's goods and services, and whether the evidence of use was sufficient to overcome objections under section 41 of the Act. Specifically, the delegate had to consider if the trade mark was sufficiently distinctive for the goods and services as originally filed, or if amendments were necessary.

The delegate's reasoning focused on the evidence of use provided by the applicant, which included declarations detailing the extensive use of the trade mark "MAD MEX" since 2007 across 61 restaurants in Australia. The evidence demonstrated the trade mark's prominent display on menus, in marketing campaigns like "Naked January," and in various media articles and third-party online content. While acknowledging that the trade mark might not be inherently adapted to distinguish for some goods, the delegate found that the substantial evidence of use, coupled with an agreement to amend the list of goods, was sufficient. The delegate accepted the application for registration in respect of the amended list of goods.