Opposition by Maya Abhaya to extension of protection under Part 17A, Division 3, Subdivision C of the Trade Marks Regulations 1995 (Cth) of trade mark number 1933870 (International Registration number 1407342) -...

This matter concerned an opposition by Maya Abhaya to the extension of protection in Australia of trade mark number 1933870 (International Registration number 1407342), known as "Snap Circuits". The opposition was based on a ground under section 41 of the *Trade Marks Act 1995* (Cth). The decision was made by Hearing Officer Louise Tuohy.

The primary legal issue was whether the trade mark "Snap Circuits" was capable of distinguishing the goods for which protection was sought, or whether it was too descriptive. This involved considering the ordinary signification of the words "snap" and "circuit" in relation to the goods, and whether other traders might legitimately wish to use these words in their ordinary signification. The court was required to determine if the mark was inherently adapted to distinguish the goods, and if not, whether it had acquired distinctiveness through use.

The Hearing Officer applied the principles established in *Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd*, which outline the test for determining if a trade mark is capable of distinguishing goods or services. This test involves assessing whether the mark is inherently adapted to distinguish, considering the likelihood that other traders would need to use the same or similar marks in the ordinary course of their business. The Hearing Officer found that while "Snap Circuits" had some inherent adaptability to distinguish, it was not sufficiently so, falling within the scope of section 41(4) of the Act. However, the Hearing Officer was satisfied, based on extensive use and promotion in Australia and similar markets, that the mark had acquired distinctiveness.

Consequently, the Hearing Officer decided to extend protection to the trade mark, subject to an endorsement that the provisions of section 41(4) of the Act were applied. Costs were awarded against the Opponent.