National Seniors Australia Ltd
[2025] ATMO 202
•26 September 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application numbers 2427002 and 2427003 (both in classes 35, 36, 39 and 41) – National Seniors Australia (fancy) and NATIONAL SENIORS - in the name of National Seniors Australia Ltd.
Delegate: | Nicole Worth |
Representation: | Applicant: Shauna Ross (counsel), instructed by Talbot Sayer law firm. |
Decision: | 2025 ATMO 202 Trade Marks Act 1995 (Cth) – s 33 proceedings: Registrar to accept or reject applications – ground for rejection raised under s 41 for both applications – trade marks to some extent but not sufficiently inherently adapted to distinguish – evidence of use and other circumstances sufficient – trade mark applications accepted. |
Background
This is a decision pursuant to s 33 of the Trade Marks Act 1995 (Cth) (‘Act’)[1] which provides that the Registrar of Trade Marks must, after examination, accept an application to register a trade mark unless satisfied that, among other things, there are grounds for rejecting it.
[1] Any references to a section or regulation is a reference to a section of the Trade Marks Act 1995 (Cth) (‘Act’) or a regulation of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) respectively, unless otherwise indicated.
On 9 February 2024 (‘Filing Date’) National Seniors Australia Ltd (‘Applicant’) filed trade mark application numbers 2427002 and 2427003 to register the trade marks detailed below.
| NATIONAL SENIORS | |
| (‘Fancy Mark’) | (‘Plain Mark’) |
| (Collectively ‘Trade Marks’) | |
| Application no. 2427002 | Application no. 2427003 |
| Goods and Services: Class 35: Collection of information relating to market research; Commercial lobbying services; Employment consultancy; Market surveys; Surveys (opinion polling); Management, administration, operation and supervision of customer incentive programmes and schemes which offer members rebates, discounts, rewards or other benefits on goods and services of participating companies; Management, administration, operation and supervision of schemes or customer reward schemes; Marketing and promotional services; Direct mail advertising; compilation and maintenance of direct mailing lists; Promotion of leisure activities; Promotion of transportation, travel and airline services and the supply of benefits in connection with transportation and travel incentive schemes; Market research and advisory services; retailing relating to the sale of gift memberships; Lobbying services for commercial purposes (promoting, publicising or otherwise representing the interests or concerns of others), other than services in Class 45; Commercial advocacy (promoting, publicising or otherwise representing the interests or concerns of others in the fields of aged care, retirement income, pensions, pensioners housing and healthcare), other than services in Class 45; Information, advisory and consultancy services related to the aforesaid (including such services provided online); Business and market research services, including the preparation of research reports, relating to ageing, productive ageing, lifestyle issues for seniors and preventative health issues; Information, advisory and consultancy services related to business and market research services, including the preparation of research reports, relating to ageing, productive ageing, lifestyle issues for seniors and preventative health issues (including such services provided online) discount card services; Management, administration, operation and supervision of sales and promotional incentive schemes Class 36: Financial consultancy, evaluation and management; Financial information services; Financial investment advisory and consultancy; Financial advisory and consultancy in relation to retirement investment and payment; security, stocks and bonds brokerage; Advice and advisory services relating to insurance; Appraisals for insurance purposes; Arranging of insurance; Financial administration of insurance claims; Providing insurance information, including online; Insurance services, including insurance brokerage, insurance consultancy and information; Research for insurance purposes; Research services relating to banking; Research services relating to finance; Research services relating to investment; Charitable fund raising; Information, advisory and consultancy services related to the aforesaid (including such services provided online) Class 39: Arranging and conducting of tours; Booking of seats for travel; Travel reservation; Provision of information on travel and tours; Escorting of travellers; Information, advisory and consultancy services related to the aforesaid (including such services provided online) Class 41: Conducting | |
The applications were examined as required by s 33 and a ground for rejection under s 41(3) was raised against both applications. The bases for the ground for rejection were:
2427002
Your trade mark is NATIONAL SENIORS AUSTRALIA.
A SENIOR or senior citizen refers to an older or elderly person, usually someone who [is] over 60 years old.
The trade mark indicates that the claimed services are for SENIORS, that are provided NATIONALLY in AUSTRALIA.
Other traders should be able to use NATIONAL SENIORS AUSTRALIA, or something so nearly resembling it, to describe goods or services similar to yours in the normal course of trade.
2427003
Your trade mark is NATIONAL SENIORS.
A SENIOR or senior citizen refers to an older or elderly person, usually someone who [is] over 60 years old.
The trade mark indicates that the claimed services are for SENIORS, that are provided NATIONALLY.
Other traders should be able to use NATIONAL SENIORS, or something so nearly resembling it, to describe goods or services similar to yours in the normal course of trade.
Over the course of a further four examination reports, the Applicant made and proposed amendments to its services and provided evidence of use of its Trade Marks. The examiner was satisfied that the amendments and evidence of use were sufficient to overcome the ground for rejection, except in relation to certain services in classes 35, 36 and 41. In respect of those services the examiner considered either that there was insufficient financial data provided, that variations of the trade mark were used (as opposed to the specific trade mark in question), or that the use was not extensive enough.
After the fifth examination report, the Applicant exercised its right to be heard.
I heard the matter, as a delegate of the Registrar of Trade Marks, on 1 July 2025. Shauna Ross of counsel, instructed by Jack Collings of Talbot Sayer law firm, represented the Applicant at the hearing and filed written submissions on its behalf.
The purpose of these proceedings is not a review of the examiner’s decision. Rather, this is a fresh consideration of the ground for rejection.
The Legislation
Section 41 of the Act relevantly provides:
41 Trade mark not distinguishing applicant’s goods or services
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
Note 1:Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
(5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
A presumption of registrability is embodied in s 33 which provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it (thereby placing the onus for proving the ground upon the Registrar, rather than placing the onus to prove registrability upon the Applicant). Accordingly, if I consider the Trade Marks have some inherent adaptation to distinguish the designated services, I am not entitled to reject them unless satisfied that the combined effect of their inherent adaptation to distinguish, any past or intended use of them, and any other circumstances, has not or will not render the Trade Marks distinctive or capable of distinguishing. If I consider the Trade Marks have no inherent adaptation to distinguish, I am not entitled to reject them unless I am satisfied that they do not in fact distinguish the designated services, having regard to the extent to which the Trade Marks were used, if at all, before the Filing Date.
Discussion
The starting point for the assessment under s 41 is a consideration of the inherent adaptation of the Trade Marks to distinguish the designated services from those of other traders. This is to be tested
by reference to the likelihood that other persons, trading in goods of the relevant kind and being actuated by only proper motives – in the exercise, that is to say, of the common right of the public to make honest use of words forming part of the common heritage, for the sake of the signification which they ordinarily possess – will think of the word and want to use it in connexion with similar goods in any manner which would infringe a registered trade mark granted in respect of it.[2]
[2] Clark Equipment Co v Registrar of Trade Marks [1964] HCA 55, [5] (Kitto J).
This test was cited with approval in Cantarella Bros Pty Limited v Modena Trading Pty Limited.[3] In that case their Honours describe a two-step process of consideration wherein first the ordinary signification of a word is determined, permitting a conclusion to be drawn as to whether the word contains a ‘direct reference’ or ‘covert and skilful allusion’. Then the legitimate desire of other traders to use the word is considered, wherein only a word comprising a ‘direct reference’ can legitimately be desired for use by other traders – not words that are allusive or metaphorical.[4]
[3] [2014] HCA 48 (French CJ, Hayne, Crennan, Keifel and Gageler JJ).
[4] Ibid [59].
I start therefore by considering the ordinary signification, if any, of the Plain Mark NATIONAL SENIORS. Putting aside the consideration of whether the Fancy Mark amounts to the Plain Mark with additions or alterations not substantially affecting identity, it may safely be said that the Fancy Mark is at least as distinctive as the Plain Mark, if not more so. Should the Fancy Mark require separate consideration, I will turn to it as appropriate.
I bear in mind that it is the signification of the Plain Mark as a whole which is relevant, however it remains necessary to consider the ordinary signification of the words individually in order to assess the signification of the phrase.[5] Additionally, any meaning of the Plain Mark is to be assessed in the context of the designated services: ‘[T]he meaning of all words is governed by their context and how words are understood depends upon the universe of discourse. Here, the scope of the use of the word is settled by the application for registration…’[6]
[5] See for example Melbourne Bone and Joint Clinic Pty Ltd v Registrar of Trade Marks [2024] FCA 53 (Moshinsky J) or Apple Inc. v Registrar of Trade Marks [2014] FCA 1304 (Yates J), wherein the ordinary signification of the respective phrases MELBOURNE BONE AND JOINT CLINIC and APP STORE were considered, taking into account the meaning of the individual words comprising the phrases.
[6] Howard Auto-Cultivars Limited v Webb Industries Proprietary Limited [1946] HCA 15 (Dixon J), (1946) 72 CLR 175, 184.
The Macquarie Dictionary provides the following definitions of ‘national’ and ‘senior’:
national adjective 1. of, relating to, or maintained by a nation as an organised whole or independent political unit: national affairs. 2. peculiar or common to the whole people of a country: national customs. 3. devoted to one’s own nation, its interests, etc.: patriotic.[7]
senior adjective 1. older or elder…2. of higher rank or standing, especially by virtue of longer service. -noun 3. a person who is older than another. 4. One of higher rank or standing, especially by virtue of longer service. 5. a senior citizen.[8]
[7] Macquarie Dictionary (online at 2 September 2025) ‘national’ (def 1-3).
[8] Macquarie Dictionary (online at 2 September 2025) ‘senior’ (def 1-5).
‘National’ has a number of definitions, the most common meanings being those that pertain to the whole of a nation. Similarly, ‘senior’ has varied meanings, most commonly relating to older people. The words themselves do not naturally form a composite expression either grammatically or conceptually. There are no people or things that are ‘national seniors’. Nor can the words be said to describe the services.
Nonetheless, it is not difficult to derive meaning from the expression. NATIONAL SENIORS is a reference to older Australians across the country, and in the context of the services refers to the intended audience of those services. There is a continuum of distinctiveness for trade marks, reflected in the Act itself and observed in several court decisions, notably Moroccanoil Israel Ltd v Aldi Foods Pty Ltd[9] wherein the following passage is cited:
Just as the distinction between descriptive and fancy names is not a distinction of law so too it is wrong to see the distinction in black and white terms. The reality is that there is a continuum with at the extremes purely descriptive names at the one end, completely invented names at the other and in between names that contain ordinary English words that are in some way or other at least partly descriptive.[10]
[9] [2017] FCA 823, [638] (Katzmann J).
[10] Equity Access Pty Ltd v Westpac Banking Corp [1989] FCA 506, [71] (Hill J).
I consider that the Plain Mark lies between the two extremes. It does not directly describe the specified services nor a character or quality of them. At the same time, it clearly refers to a segment of Australian society upon which the Applicant’s services are focussed. Given this signification, it is not difficult to imagine that other traders who cater to the older population of Australia may likewise wish to use NATIONAL SENIORS as a reference to their intended audience.
Accordingly, in my estimation the Plain Mark falls within the category of trade marks that are to some extent, but not sufficiently, inherently adapted to distinguish the designated services from the services of other persons, contemplated in s 41(4). Although the state of the Register of Trade Marks is generally of limited assistance, I observe that my conclusion is not inconsistent with other registered trade marks such as NATIONAL ROADS & MOTORISTS ASSOCIATION; NATIONAL HIRE; NATIONAL PHARMACIES; NATIONAL BREAST CANCER FOUNDATION and NATIONAL HOMELESS COLLECTIVE, all of which have been registered under the same or equivalent provisions.
The Fancy Mark is likewise to some extent, but not sufficiently, inherently adapted to distinguish. The additional word AUSTRALIA and the visual arrangement of the words and geometric shapes in the mark add a further degree of distinctiveness, but those features are not so distinct that the resultant trade mark is, as a whole, inherently adapted to distinguish.
Evidence of use and other circumstances
I turn then to the combined effect of inherent adaptation to distinguish, any use or intended use of the Plain Mark and Fancy Mark, and any other circumstances.
The Applicant raises as a relevant other circumstance its previously held registrations for the trade marks NATIONAL SENIORS in plain text and BE HEARD NATIONAL SENIORS AUSTRALIA in logo form (as shown in paragraph [25] below) in relation to a broad range of goods and services in classes 16, 35, 36, 39, 41, 43 and 44. Relevant details of these registrations are at Attachment A to this decision. NATIONAL SENIORS was registered from 3 April 2003 to 3 April 2023 and the logo BE HEARD NATIONAL SENIORS AUSTRALIA was registered from 7 November 2011 to 7 November 2021. During that time the Applicant had moved addresses but did not inform its solicitors on record, and so the renewal notices were sent to the old address.
As to the Applicant’s evidence of use, the following declarations were filed in support of the applications:
·Wayne Kendall, Financial Controller of the Applicant, with exhibits WK-01 to WK-17, dated 17 June 2024 (Kendall 1).
·Wayne Kendall, confidential declaration dated 17 June 2024 (Confidential Kendall 1).
·Wayne Kendall, with exhibits WK-18 to WK-31, dated 3 December 2024 (Kendall 2).
·Wayne Kendall, confidential declaration dated 3 December 2024 (Confidential Kendall 2).
·Wayne Kendall, dated 19 February 2025 (Kendall 3).
The information in the above declarations is summarised as follows.
The Applicant is a not-for-profit membership and advocacy organization and registered charity. In an undated brochure it describes itself as:
National Seniors Australia is the country’s leading independent voice of the over 50s, with more than 200,000 members. As the nation’s largest not-for-profit organisation for the over 50s, we represent the views of older Australians and their families to all levels of government. We make sure our members’ voices are heard on the issues that count such as age discrimination, mature age employment, superannuation, pension increases, health care, aged care and the cost of living.
We also make sure our members’ voices are heard by businesses and retail groups across Australia. Inside this book is a selection of everyday discounts to save you money. For a wider range of offers, please visit our website which is packed full of the latest savings, deals and chances to win great prizes.[11]
[11] Kendall 1, exhibit WK-02.
National Seniors Australia was established in 1976, initially under the name National Seniors Association Limited and then from 2007 under National Seniors Australia. From 2012 the Applicant began using various stylised trade marks including those below. In 2018 the Applicant underwent a rebrand and commenced using versions including the Fancy Mark.
As at June 2024 the Applicant had approximately 243,000 members in every state and territory in Australia (a 2014-2015 Federal Budget Submission mentions ‘more than 200,000 individual fee-paying members’[12]). There are 71 community branches in each state and territory.[13] Members receive benefits and discounts in the form of content from the Applicant and discounts arranged with over 2,000 businesses around Australia. The Applicant’s services are also available and promoted to non-members. Membership application forms and other documents regarding member benefits display the names ‘National Seniors Australia’, ‘National Seniors’, the website address ‘ and the logos shown above.[14] They are declared to be from 2012 to 2024, although several are undated. Those that indicate dates are from around January 2014, February and May 2017, and February 2019 (inferred from due dates for various actions such as responding to a survey or becoming a member).
[12] Kendall 1, exhibit WK-03.
[13] Kendall 2, [7].
[14] Kendall 1, WK-02.
In or around 1998 the Applicant registered the domain name ‘ its primary website. Wayback Machine[15] extracts are exhibited, dated between 1998 and 2024.[16] They demonstrate use of the name ‘National Seniors Association’ from 1998, and then at overlapping times the Plain Mark from 2003, ‘National Seniors Australia’ from 2013, the logo from 2015 and the Fancy Mark from 2019.
[15] Being a digital archive of web pages on the internet.
[16] Kendall 1, exhibit WK-14.
The Applicant states that there have been a number of different stylised versions of its trade mark over the last 25 years but the words NATIONAL SENIORS have been the consistent dominant element of the trade mark and the Applicant’s brand identity.[17] The Applicant also states that it is always, and has always since 1976, been referred to as NATIONAL SENIORS aurally, an allegedly critical factor given the Applicant’s reliance on marketing and publicity by way of appearances on TV, radio, podcasts, and other media (discussed further below).
[17] Kendall 2, [4].
Since at least 1998, the Applicant has undertaken research, prepared reports and submissions, and undertaken advocacy and lobbying activities on behalf of older Australians in relation to issues including finance, insurance, aged care, health and housing. It has an agreement with the Australian Government Department of Health to fund the Applicant’s provision of aged care policy advice and promote aged care reform.[18] The Applicant has also run several campaigns to raise awareness of matters such as ‘Keep Cash’ (2024), ‘Let the Pensioners Work’ (post-COVID), franking credits (2019), and shingles (2014), the last of which resulted in free vaccinations for seniors.[19] It gave testimony twice to the Royal Commission into Aged Care and Safety, the final report of which is declared to have made 51 mentions of National Seniors.[20] It regularly makes submissions into the formulation of Federal and State budgets and into other key areas of government reform for seniors.[21]
[18] The agreement is dated 2019, with a variation made to it in 2022. Kendall 2, exhibit WK-22.
[19] Kendall 2, [17].
[20] Kendall 2, [19] and exhibit WK-26.
[21] Kendall 2, [20], exhibits WK-27 to WK-31.
All of the Applicant’s documentation relating to research, lobbying and campaigns, and preparation of reports and submissions is claimed to be branded with the Trade Marks. The Applicant has produced more than 100 research reports since 2008. Its research reports and submissions are submitted to government agencies and committees including the Productivity Commission, Senate Standing Committees on Economics and the Parliamentary Joint Committee on Human Rights. The reports and submissions are made publicly available by government agencies, departments (in particular the Department of Health with which the Applicant has worked for over 10 years) and the Applicant’s own website and social media pages. Exhibits related to research and reports, advocacy and lobbying, and various campaigns show use of various trade marks as follows:[22]
[22] Kendall 1, exhibit WK-03 and WK-04.
| Date | Trade Marks | |||
| Undated | National Seniors Australia | National Seniors | ||
| Undated | National Seniors Australia | nationalseniors.com.au | ||
| Undated | National Seniors | |||
| Undated | National Seniors Australia | |||
| Undated | National Seniors | nationalseniors.com.au | ||
| 2008 | National Seniors Australia | |||
| 2009 | National Seniors Australia | |||
| 2010 | ||||
| 2011 | ||||
| 2012 | National Seniors Australia | |||
| 2013 | ||||
| 2014 | ||||
| 2014-2015 | National Seniors Australia | National Seniors | ||
| 2015 | National Seniors Australia | |||
| 2016 | National Seniors Australia | |||
| 2017 | National Seniors Australia | |||
| 2017-2018 | National Seniors Australia | National Seniors | nationalseniors.com.au | |
| 2018 | National Seniors Australia | National Seniors | ||
| 2019 | National Seniors Australia | National Seniors | ||
| 2020 | National Seniors Australia | nationalseniors.com.au | ||
| 2020-2021 | National Seniors Australia | |||
| 2022 | National Seniors Australia | National Seniors | ||
| 2023 | ||||
| 2024 | National Seniors Australia | nationalseniors.com.au | ||
The Applicant has offered insurance services since at least 1998 and in 2004 was appointed a registered Authorised Representative of Allianz Australia Insurance Limited, providing car, travel, health and life insurance pursuant to that authorisation since that date. A 2012 advertisement displays the Plain Mark and the first logo below. A separate website for the Applicant’s insurance services was registered in 2012 at ‘ and Wayback Machine extracts from 2012 to 2023 demonstrate use of the second logo below as well as ‘National Seniors Insurance’, the Fancy Mark (from 2019) and the Plain Mark (from 2023).[23]
[23] Kendall 1, exhibit WK-05.
Since at least 1998 the Applicant has offered various financial services. In 2004 the Applicant was authorised to provide financial services, including arranging term deposits with Auswide Bank Ltd. The Applicant also arranges access to general and specific financial advice from various financial services providers. Brochures in evidence demonstrate use of the trade mark, the Plain Mark (in 2019), the Fancy Mark (from 2019) and the website address ‘nationalseniors.com.au’ in respect of superannuation information, estate planning, credit cards, retirement income information, downsizing costs, pensioner concessions and general financial advice relevant to older Australians.[24]
[24] Kendall 1, exhibit WK-10.
Since at least 1998 the Applicant has offered travel and tour services. In 2012 the Applicant registered a separate domain name for its travel services: ‘wwwnationalseniorstravel.com.au’. Wayback Machine extracts from 2012 to 2024 show that travel services such as tours at various destinations, cruises and train travel were advertised at that website. From 2014 the trade mark is shown to have been displayed until 2019 when the Fancy Mark is displayed.
The Applicant has arranged and conducted seminars, webinars, and workshops since at least 2012. These have been for educational and training purposes, for the benefit of the Applicant’s members as well as the broader public. Advertisements for such events[25] demonstrate use of ‘National Seniors Australia’, ‘nationalseniors.com.au’ and the logos below in 2015, 2016 and 2017, as well as the Fancy Mark and the Plain Mark in 2018 and 2019 (as well as several undated exhibits showing one or more of the above trade marks).
[25] Kendall 1, exhibit WK-13.
The Applicant declares that its promotional strategy focusses heavily on unpaid publicity and promotional activities, primarily through interviews and presentations by representatives of the Applicant, in particular its CEO. These take the form of TV and radio interviews, podcasts, newspapers and magazine features. Since around 2017 the Applicant has engaged Isentia, a public relations and media monitoring company, to provide reports regarding the value of its publicity and public relations efforts. It receives weekly Advertising Space Rate (ASR) reports. ASR is an industry standard measure giving an estimate of how much money a company would have to spend on advertising to gain the same level of media exposure received through unpaid promotional activities. The Applicant adduces an example report for the period 5 May 2024 to 5 June 2024, which provides impressive figures for potential reach (audience numbers) and ASR. Isentia information for previous years (from mid 2021) likewise show impressive figures for ASR and ‘Audience’ in respect of various expressions including ‘national seniors Australia’ and combinations of ‘national seniors’ with other words or names.[26] The Applicant also refers to interviews given by its CEO which have been viewed a significant number of times on YouTube, one of which was reposted by celebrity Russel Brand leading to further views. In addition, several mentions are made of ‘National Seniors’ in Hansard, of which six transcripts are in evidence although they are dated after the filing date.[27]
[26] Kendall 2, exhibit WK-24.
[27] Kendall 2, exhibit WK-20.
The Applicant provides its numbers of followers on various social media platforms, which although moderate are still commercially significant. Various posts are exhibited[28] demonstrating use primarily of the Fancy Mark as well as ‘National Seniors Australia’ in plain text.
[28] Kendall 1, exhibit WK-15.
Various marketing and promotional materials used by the Applicant are exhibited[29] including ‘Branch News’ newsletters from 2012 demonstrating use of the Plain Mark and the logo; a ‘Connect’ digital publication from 2023 demonstrating use of the Fancy Mark and ‘nationalseniors.com.au’; and 2017 and 2018 competition advertisements demonstrating use of the Plain Mark, the logo and ‘nationalseniors.com.au’. Other undated materials are included in the exhibit but are not described here.
[29] Kendall 1, exhibit WK-17.
Confidential sales figures are provided in Confidential Kendall 2 under the headings ‘financial services’ (2020/2021 to 2023/2024), ‘insurance services’ (2019/2020 to 2023/2024), ‘travel services’ (2013/2014 to 20232024), ‘travel insurance’ (2020/2021 to 2023/2024) and ‘membership and member benefit services’ (2010/2011 to 2023/2024). Further confidential sales figures in relation to insurance are provided in Confidential Kendall 3 (2012 to 2019). The figures vary depending on the services involved, from impressive to moderate though still commercially significant. The Applicant explains that it does not make money in respect of its research or advocacy services or organising exhibitions – as a not-for-profit entity it uses profit from other activities for its advocacy and research services.[30] Confidential marketing figures for the years 2010/2011 to 2022/2023 to are also provided in Confidential Kendall 1, which are substantial.
[30] Sales figures have been provided in each of Confidential Kendall 1, Confidential Kendall 2 and Confidential Kendall 3. The sales figures were combined in Confidential Kendall 1, then further separated into categories in Confidential Kendall 2. Confidential Kendall 3 provides figures relating to insurance prior to 2019.
Consideration of evidence
In total the evidence demonstrates long-standing use, over an approximately 25 year period, of trade marks incorporating the words NATIONAL SENIORS (not including undocumented use claimed from 1976). Other than the logo used for a period between 2008 and 2011 (see the table in paragraph [31]), the trade marks used by the Applicant have always contained as their dominant element the words NATIONAL SENIORS. The other elements in the trade marks have been either non-distinctive geometric shapes, words that describe the services or ‘Australia’. This is not to say that the trade mark variations are necessarily substantially identical to the plain words – their combination and specific visual arrangement have a degree of significance – rather, the words NATIONAL SENIORS are the most striking feature and have consistently been used as the dominant element for a substantial period of time. By virtue of this they are likely to have attained a degree of acquired distinctiveness.
In addition, there are uses of the Plain Mark. Firstly, there are a number of instances of use in membership documentation and in the reports, submissions and campaign material as shown in paragraph [31]. Secondly, Wayback Machine extracts for the website ‘ are in evidence which date back to 1998. Use of a domain name can constitute use of a trade mark[31] which I consider to be the case here, the website being used to promote membership and member benefits, travel and insurance services (before separate websites were established for these, also with addresses featuring ‘National Seniors’) and the Applicant’s lobbying and representation activities. The Plain Mark is also shown to be featured on the captured web pages at various times beginning in 2003. Thirdly, data from Isentia indicates substantial reach and ASR of ‘National Seniors’ in combination with various words or names, with 73.4% of mentions occurring online.[32] Lastly, the Plain Mark is used in marketing material relating to financial services, from 2019.
[31] Goodman Fielder Pte Ltd v Conga Foods Pty Ltd [2020] FCA 1808, [140] (Burley J), citing Flexopack S.A. Plastics Industry v Flexopack Australia Pty Ltd [2016] FCA 235, [64] (Beach J) and Sports Warehouse, Inc. v Fry Consulting Pty Ltd [2010] FCA 664, [155] (Kenny J).
[32] Kendall 1, exhibit WK-16.
The Fancy Mark has likewise had significant use, albeit for a shorter period of time – since 2018. Despite its shorter period of use, it has more clearly been featured on the Applicant’s documentation, website and social media.
I bear in mind also that the Applicant had a monopoly over the expression ‘National Seniors’ for twenty years, from 2003 to 2023, and a logo featuring those words, from 2011 to 2021, in respect of a majority of the services specified in the subject applications. Other traders were accordingly barred from using those words in respect of the same or similar services, and the examiner’s research does not reveal any other party using ‘National Seniors’ in the time between the lapsing of the previous registration and the subject applications. A monopoly was also held over the BE HEARD NATIONAL SENIORS AUSTRALIA logo for ten years, from 2011 to 2021. This is a further facet of evidence which supports the Trade Marks having acquired distinctiveness.
I consider that the long standing use and exposure of the Trade Marks also demonstrates that the Trade Marks are capable of becoming distinct in respect of adjacent services for which specific use has not been demonstrated, such as ‘employment consultancy’ or ‘security, stocks and bonds brokerage’. The older sector of the Australian market is likely to have some familiarity with National Seniors and/or National Seniors Australia either in its capacity as a member organisation, as a provider of financial, insurance and travel services, or as a representative to government in respect of financial, health and wellbeing matters. This familiarity is likely to extend to other related services offered under the Trade Marks. I could therefore not be satisfied, in terms of the language of s 41(4), that the Trade Marks do not and will not distinguish the Applicant’s services having regard to the use demonstrated in the evidence and the circumstance of the Applicant’s relatively recent monopoly granted by virtue of its previous registrations.
Decision
I consider that both of trade mark applications 2427002 and 2427003 may be accepted for possible registration, and I have accepted the Trade Marks with each bearing the following endorsement:
Evidence and/or other circumstances provided under subsection 41(4).
The acceptance will be advertised for opposition purposes in due course, and the Applicant will receive notification should any opposition to registration be filed.
Nicole Worth
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
26 September 2025
Attachment A
National Seniors
Owner: National Seniors Association Limited
Filing date: 3 April 2003
Renewal due: 3 April 2023
Removed from register: 11 October 2023
Goods and Services:
Class 16: Paper and paper goods in this class; printed matter and printed publications, including magazines, newsletters, brochures, leaflets, posters, members cards and application forms; stationery; instructional and teaching material in this class
Class 35: Management, administration, operation and supervision of programmes and schemes which offer members rebates, discounts, rewards or other benefits on goods and services of participating companies; management, administration, operation and supervision of discount card services; management, administration, operation and supervision of sales and promotional incentive schemes or customer reward schemes; marketing and promotional services; market research and advisory services; advertising and advertising agency services; direct mail advertising; compilation and maintenance of direct mailing lists; promotion of leisure activities; promotion of transportation, travel and airline services and the supply of benefits in connection with transportation and travel incentive schemes; organisation of exhibitions and shows for commercial or advertising purposes
Class 36: Financial consultancy, evaluation and management; financial information; financing of purchases; investment advisory and consultancy; insurance services, including insurance brokerage, insurance consultancy and information; mutual funds; financial advisory and consultancy in relation to retirement investment and payment; security, stocks and bonds brokerage; stock exchange brokerage; credit facilities; credit and charge card services; administration and processing services in respect of credit and account sales; funeral saving plans; charitable fund raising
Class 39: Arranging and conducting of tours; booking of seats for travel; travel reservation; provision of information on travel and tours; escorting of travellers
Class 41: Arranging and conducting of conferences, seminars and workshops; booking of seats for shows; sport and holiday camp services; organisation of shows; organisation of sports or other competitions; organisation of balls; organisation of exhibitions for cultural or educational purposes; entertainer services; production of shows; entertainment information relating to cultural, sports and recreational events; presentation of live performances; provision of sports facilities; provision of recreation facilities; timing of sports events; health club services; library services; operating lotteries and raffles; cultural activities, including organization and presentation of awards, particularly for persons over 50 years of age, organization of cultural events, including award presentation ceremonies; provision of information relating to cultural activities and events, particularly awards and award ceremonies
Class 43: Providing of food and drink; restaurant, cafe, cafeteria, snack-bar, canteen and catering services; accommodation or hotel reservations
Class 44: Nursing homes; retirement homes; healthcare; medical assistance; nursing services
Owner: National Seniors Australia Limited
Filing date: 7 November 2011
Renewal due: 7 November 2021
Removed from register: 16 May 2022
Goods and Services:
Class 16: Paper and paper goods in this class; printed matter and printed publications, including magazines, newsletters, brochures, leaflets, posters, members cards and application forms; stationery; instructional and teaching material in this class
Class 35: Management, administration, operation and supervision of programmes and schemes which offer members rebates, discounts, rewards or other benefits on goods and services of participating companies; management, administration, operation and supervision of discount card services; management, administration, operation and supervision of sales and promotional incentive schemes or customer reward schemes; marketing and promotional services; market research and advisory services; advertising and advertising agency services; direct mail advertising; compilation and maintenance of direct mailing lists; promotion of leisure activities; promotion of transportation, travel and airline services and the supply of benefits in connection with transportation and travel incentive schemes; organisation of exhibitions and shows for commercial or advertising purposes; retailing services, including retailing relating to the sale of gift memberships; management and operation of a buying scheme, namely, a scheme where members indicate they wish to purchase a product, and retailers submit a quotation for their best price for that product; lobbying (promoting, publicising or otherwise representing the interests or concerns of others); information, advisory and consultancy services related to the aforesaid (including such services provided online)
Class 36: Financial consultancy, evaluation and management; financial information; financing of purchases; investment advisory and consultancy; insurance services, including insurance brokerage, insurance consultancy and information; mutual funds; financial advisory and consultancy in relation to retirement investment and payment; security, stocks and bonds brokerage; stock exchange brokerage; credit facilities; credit and charge card services; administration and processing services in respect of credit and account sales; funeral saving plans; charitable fund raising; financial grant services, including financial grants for research purposes; information, advisory and consultancy services related to the aforesaid (including such services provided online)
Class 39: Arranging and conducting of tours; booking of seats for travel; travel reservation; provision of information on travel and tours; escorting of travellers; transport; packaging and storage of goods; information, advisory and consultancy services related to the aforesaid (including such services provided online)
Class 41: Arranging and conducting of conferences, seminars and workshops; booking of seats for shows; sport and holiday camp services; organisation of shows; organisation of sports or other competitions; organisation of balls; organisation of exhibitions for cultural or educational purposes; entertainer services; production of shows; entertainment information relating to cultural, sports and recreational events; presentation of live performances; provision of sports facilities; provision of recreation facilities; timing of sports events; health club services; library services; operating lotteries and raffles; cultural activities, including organization and presentation of awards, particularly for persons over 50 years of age, organization of cultural events, including award presentation ceremonies; provision of information relating to cultural activities and events, particularly awards and award ceremonies; entertainment services; education services; charitable services in the nature of educational services; electronic publication of information on a wide range of topics, including online and over a global computer network; information, advisory and consultancy services related to the aforesaid (including such services provided online)
Class 42: Research services; medical research services; research services relating to ageing, productive ageing, lifestyle issues for seniors and preventative health issues; preparation of research reports relating to the aforesaid; information, advisory and consultancy services related to the aforesaid (including such services provided online)
Class 43: Providing of food and drink; restaurant, cafe, cafeteria, snack-bar, canteen and catering services; accommodation or hotel reservations; charitable services relating to the provision of food and drink and temporary accommodation; wine club services; information, advisory and consultancy services related to the aforesaid (including such services provided online)
Class 44: Nursing homes; retirement homes; healthcare; medical assistance; nursing services; charitable services relating to the provision of medical or healthcare; information, advisory and consultancy services related to the aforesaid (including such services provided online)
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