National Seniors Australia Ltd - [2025] ATMO 202

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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2025] ATMO 202
Decision Date: 26 September 2025

CaseChat Overview and Summary

This decision concerns two trade mark applications, numbers 2427002 and 2427003, filed by National Seniors Australia Ltd. The applications sought to register the trade marks "National Seniors Australia" (fancy mark) and "NATIONAL SENIORS" (plain mark) in classes 35, 36, 39, and 41, relating to services such as market research, financial consultancy, travel arrangements, and educational seminars. The delegate of the Registrar of Trade Marks was required to determine whether these applications should be accepted or rejected.

The primary legal issue before the delegate was whether the trade marks were capable of distinguishing the applicant's services from those of other persons, as required by section 41 of the Trade Marks Act 1995 (Cth). Specifically, the delegate had to consider if the trade marks were inherently adapted to distinguish the services and, if not sufficiently so, whether their use or other circumstances had caused them to distinguish the services in fact. The examiner had raised a ground for rejection under section 41(3) on the basis that the marks were not sufficiently inherently adapted to distinguish and that use had not been extensive enough to establish distinctiveness.

The delegate reasoned that the marks "NATIONAL SENIORS" and "National Seniors Australia" were not wholly descriptive but did have a direct reference to the intended audience of the services, namely older Australians. Applying the principles from *Clark Equipment Co v Registrar of Trade Marks* and *Cantarella Bros Pty Limited v Modena Trading Pty Limited*, the delegate found that the marks were to some extent, but not sufficiently, inherently adapted to distinguish the designated services. The delegate then considered the evidence of use and other circumstances, including the applicant's long history of operation, previous registrations of similar marks, and extensive use of the trade marks in promoting its services and discounts. This evidence, combined with the inherent, albeit limited, distinctiveness of the marks, led the delegate to conclude that the trade marks did, in fact, distinguish the applicant's services.

Consequently, the delegate determined that the ground for rejection under section 41 of the Act was not made out. The trade mark applications were therefore accepted.

Orders