National Software Pty Ltd, Re

This matter concerns Trade Mark Application 468932 lodged by National Software Pty Ltd for a mark comprising a representation of computer software and a map of Australia, in respect of goods in class 9. The application was initially objected to under paragraph (e) of sub-section 24(1) of the Trade Marks Act 1955 (Cth) on the grounds that the mark was not distinctive, as it contained non-distinctive representations of goods and a map of Australia, without sufficient distinctiveness when viewed as a whole.

The applicant sought to amend the application to one for registration in Part B of the Register and offered disclaimers for the map of Australia and the computer disc device. Following this amendment, an objection under section 25 of the Act was raised, relating to the evidence of use. The examiner maintained this objection, finding that the evidence demonstrated use of a mark that included the word "NATSOFT" on the computer discs within the device, which differed from the mark as lodged. The applicant requested a decision on the written record.

The delegate was required to determine whether the trade mark was capable of becoming distinctive of the applicant's goods, a prerequisite for registration in Part B of the Register. This involved considering whether the mark, as applied for, was capable of meeting the tests of distinctiveness laid down in sub-section 26(2) of the Act. The delegate noted that the mark, consisting of a representation of goods and a map of Australia, lacked inherent adaptation to distinguish the applicant's goods. The onus was on the applicant to establish that the mark was capable of actually becoming distinctive.

The delegate found that the evidence of use did not support the registration of the mark as lodged. The evidence showed use of a composite mark where the word "NATSOFT" was prominently displayed on the discs within the device, and this composite was used in close association with the applicant's registered mark "NATSOFT". The delegate concluded that the goods were likely ordered by reference to the word element, and the device, being non-distinctive and overshadowed by the prominent word elements in use, was likely perceived as embellishment rather than an indication of trade source. Consequently, the delegate was not satisfied that the mark was capable of becoming distinctive and refused the application.