Multiplan Pty Ltd

This matter concerned an application by Multiplan Pty Ltd to register the trade mark MULTIPLAN for services in classes 37, 40, and 42, including building and construction, custom fabrication, and engineering design. An objection was raised under section 41(4) of the Trade Marks Act 1995 (Cth) on the basis that the mark was not sufficiently inherently adapted to distinguish the services and did not, or would not, distinguish them from those of other persons.

The delegate of the Registrar of Trade Marks was required to determine whether the trade mark MULTIPLAN was inherently adapted to distinguish the applied-for services and, if only to some extent but not sufficiently, whether its use had resulted in it actually distinguishing the services. The delegate also had to consider the combined effect of the mark's inherent distinctiveness, its use, and any other relevant circumstances.

The delegate reasoned that while the ordinary signification of MULTIPLAN conveyed the provision of multiple designs or proposals, particularly in relation to construction and engineering, it was not sufficiently inherently adapted to distinguish all the services, specifically drafting services. However, the delegate found that the Applicant had provided extensive evidence of use of the trade mark since 1993 across Australia, including significant projects for major companies and substantial business growth. This evidence demonstrated that the trade mark had become distinctive of the Applicant's services.

Consequently, the delegate was satisfied that the trade mark MULTIPLAN was capable of distinguishing the applied-for services, including the drafting services, and therefore accepted the application for registration.