Maxam Food Products Pty Ltd, Re

This decision concerns two applications, Nos 444266 and 444267, lodged by Maxam Food Products Pty Ltd for the registration of a trade mark in Part A of the Register. The mark, featuring the words "LA DELIZIOSA" and an endless belt device, was sought for goods in International Classes 30 and 29 respectively. An examiner raised objections under s.24(1) of the Trade Marks Act 1955 (Cth), arguing the mark was not invented, had a direct reference to the character or quality of the goods, and was not distinctive due to the Italian word "DELIZIOSA" meaning "delightful" or "delicious."

The applicant subsequently sought to amend the applications to seek registration in Part B of the Register, contending the mark was capable of becoming distinctive, supported by evidence of extensive sales and advertising. The examiner maintained the objection, deeming the mark incapable of becoming distinctive under s.25 due to its descriptive and laudatory nature. Despite further submissions from the applicant's attorneys, including arguments about the "unusualness" of foreign words and the distinctive "get-up" of the mark, the examiner remained unconvinced. The matter proceeded to a hearing before a delegate of the Registrar of Trade Marks.

The delegate considered the meaning of "LA DELIZIOSA" and concluded that it is a normal Italian expression meaning "the delicious one," directly referring to the character or quality of food products. The delegate found that Australians, accustomed to similar Italian phrases, would likely understand its meaning, particularly in the context of Italian foodstuffs. The delegate also rejected the argument that the mark's visual presentation or a disclaimer of the word "DELIZIOSA" would render it registrable. Applying the principles from cases such as *Clark Equipment Co v Registrar of Trade Marks* and *Burger King Corporation v The Registrar of Trade Marks*, the delegate determined that while the mark might have acquired distinctiveness in fact through extensive use, it lacked the inherent adaptability to distinguish required for registration in Part B.

Consequently, the delegate found that the applicant's mark was not registrable in Part B of the Register, and the applications were refused.