NationsBank Corporation, Re

This matter concerned an application by NationsBank Corporation, a United States entity, to register the trade mark WORLD CARD for banking services, specifically credit and debit card services and accounts. The examiner objected to the registration on the grounds that the words "world card" were descriptive of services accessible worldwide and that other traders would likely use such words to describe their global credit services, thus contravening section 41 of the *Trade Marks Act 1995* (Cth). The application proceeded to a hearing before a delegate of the Registrar of Trade Marks.

The delegate was required to determine whether the trade mark WORLD CARD was capable of distinguishing the applicant's services from those of other persons, as mandated by section 41 of the *Trade Marks Act 1995*. This involved assessing the inherent adaptability of the trade mark to distinguish the services and, if necessary, considering the extent of its use or intended use and any other relevant circumstances. The delegate was guided by the principles established in *Blount Inc v The Registrar of Trade Marks* and *Clark Equipment Company v Registrar of Trade Marks*, which require consideration of whether other traders, acting honestly, would be likely to use the term to describe similar services.

The delegate reasoned that the term "world card," when applied to banking services, would be readily understood by the public to signify services operating on an international basis and available globally. The delegate found that, in the context of modern international banking and electronic commerce, it was highly probable that competitors offering similar services would wish to use the term "world card" to describe their own offerings. Consequently, the delegate concluded that the trade mark was not inherently adapted to distinguish the applicant's services and that there was no evidence presented to demonstrate that the mark had, in fact, distinguished the services prior to the filing date.

Accordingly, the delegate rejected the application for registration of the trade mark WORLD CARD pursuant to section 41(2) of the *Trade Marks Act 1995*, as the trade mark was found not to be capable of distinguishing the applicant's services from those of other persons.