Opposition by Jaimex Nominees Pty Ltd to registration of trade mark application number 1990619 (class 5) - earthify - in the name of Bamboo Babe Pty Ltd

This matter concerned an opposition by Jaimex Nominees Pty Ltd (the Opponent) to the registration of the trade mark application number 1990619, "earthify," in class 5, filed by Bamboo Babe Pty Ltd (the Applicant). The opposition was brought under section 52 of the *Trade Marks Act 1995* (Cth), specifically on the ground that the trade mark was not capable of distinguishing the applicant's goods or services, as provided for in section 41 of the Act.

The legal issue before the Hearing Officer was whether the trade mark "earthify" was capable of distinguishing the applicant's goods, which included feminine hygiene products, sanitary products, and nappies, from the goods of other persons. This required an assessment of whether the trade mark was inherently adapted to distinguish the applicant's goods and whether it did, or would, in fact, distinguish them, considering the extent of its inherent distinctiveness and any use or intended use.

The Hearing Officer reasoned that while the Opponent argued "earthify" was an extension of the word "earth" meaning "to become earth," and thus should be available for use by other traders of biodegradable products, this meaning did not have a direct reference to the character or quality of the applicant's goods. Applying the principles from *Cantarella Bros Pty Ltd v Modena Trading Pty Ltd*, the Hearing Officer considered the potential impairment of honest traders' rights and concluded that the trade mark was inherently adapted to distinguish the applicant's goods. The Hearing Officer found no evidence that other traders would legitimately need to use the term for similar goods, noting that terms like "natural and organic," "eco-friendly," and "biodegradable" were commonly used. Consequently, the Opponent failed to establish the ground of opposition under section 41.

The Hearing Officer decided to register the trade mark application number 1990619, as the opposition was unsuccessful. The Applicant was awarded costs against the Opponent on the official scale.