Opposition by Segator Pty Limited to registration of trade mark application 1849584 (30) PAGOTO gelato & waffle house (fancy) in the name of FKS Australia Pty Limited

This matter concerns an opposition by Segator Pty Limited to the registration of trade mark application 1849584, for the mark PAGOTO gelato & waffle house (fancy), in the name of FKS Australia Pty Limited. The opposition was heard by Debrett Lyons.

The legal issues before the court were whether the trade mark application should be refused registration under section 41 of the *Trade Marks Act 1995* (Cth). This section concerns the inherent adaptability of a mark to distinguish the goods or services of the applicant. The opponent argued that the words comprising the trade mark, including "PAGOTO", "GELATO", "WAFFLE", and "HOUSE", were individually and in combination descriptive of the goods, and that the device element did not add sufficient distinction.

The court followed the reasoning of Hearing Officer Thompson in an earlier, unreported decision between the same parties concerning a similar trade mark application. In that earlier decision, it was found that the Greek word "pagoto" translates to "ice cream" and is therefore directly descriptive of the goods. The court agreed that the word "pagoto", when considered in relation to the goods, would be understood by Australian consumers as meaning ice cream. The court found that the re-positioning and relative dominance of the word "pagoto" in the opposed mark devalued any distinctiveness contributed by the scoop device, rendering the mark descriptive of the goods. The court concluded that section 41(4) of the Act applied, and the applicant had not provided evidence to satisfy the Registrar that the mark was likely to distinguish the applicant's goods.

The court ordered that the registration of the trade mark application be refused.