Pact Earth Ltd. - [2025] ATMO 68

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:International Registration Designating Australia number 2388553 (International Registration number 1750765) (classes 1, 18 & 24) – OVAL - in the name of Pact Earth Ltd

Delegate:

Tracey Berger

Representation:

Applicant: Shehana Wijesena, assisted by Sanya Bhatnagar, both of Bird & Bird

Decision:

2025 ATMO 68

Trade Marks Act 1995 (Cth) – section 33 proceeding – ground for rejection under s 41(3) considered - trade mark has no inherent adaptation to distinguish – extension of protection refused for goods in classes 18 and 24 – extension of protection granted for class 1 goods

Background

Pact Earth Ltd (‘Holder’) has sought the extension of protection of its International Registration 1750765 to Australia as detailed below:

International Registration Number

1750765

Trade Mark Number

2388553 (‘IRDA’)

Trade Mark

OVAL

Filing Date

27 July 2023[1]

Goods

Class 1: Organic compositions and substances for use in the textile industry; collagen for industrial purposes; proteins for use in the textile industry; collagen for use in the textile industry; chemicals for use in the textile industry; organic materials used as raw ingredients in the manufacture of textiles; organic compositions and substances for use in the manufacture of textiles; plant-based fibres used as a raw ingredient in the manufacture of textiles; collagen used as a raw ingredient in the manufacture of textiles; enzymes for use in the textile industry; reducing agents for the textile industry; collagen used as a raw ingredient in treating, dying, impregnating, waterproofing and brightening textiles; plant-based fibres used as a raw ingredient in in treating, dying, impregnating, waterproofing and brightening textiles; organic compositions and substances for manufacturing, treating, dying, impregnating, waterproofing and brightening textiles; chemicals for treating, dying, impregnating, waterproofing and brightening textiles; chemicals for use in the textile industry; chemicals for use in the manufacture of textiles; adhesives for use in the textile industry; adhesives for use in the manufacture of textiles.

Class 18: Bags; handbags; tote bags; luggage; travelling bags; suitcases; backpacks; purses; wallets; rucksacks; bum bags; holdalls; all of the aforesaid goods being made from a collagen-based biomaterial; imitation leather.

Class 24: Textiles; fabric; textile materials; textile fabrics; cloth; fabrics of organic fibres; household textiles; lining fabrics; waterproof fabrics; apparel fabrics; dressmaking fabrics; curtain fabrics; coated fabrics; knitted fabrics; woven fabrics; non-woven fabrics; furnishing and upholstery fabrics; textile fabrics for use in manufacture; textile fabrics for use in the manufacture of clothing; fabrics for use in the manufacture of hats; fabrics for use in the manufacture of footwear; fabrics for use in the manufacture of bags; fabrics for use in the manufacture of wallets; fabrics for use in the manufacture of purses; non-woven fabrics of natural fibres; fabrics for use in the manufacture of household textile articles.

(‘Holder’s Goods’)

[1] Convention priority claimed: 27 January 2023 based on UK00003872056.

The IRDA was examined under s 33 of the Trade Marks Act 1995 (Cth)[2] and a Notice of Provisional Refusal issued raising grounds for rejection under s…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2025] ATMO 68
Decision Date: 11 April 2025

CaseChat Overview and Summary

This decision concerns an application by Pact Earth Ltd. for an extension of protection for an International Registration of a Design Application (IRDA). The Registrar, represented by Hearing Officer Tracey Berger, was required to determine whether to accept or reject the IRDA.

The central legal issue before the Hearing Officer was whether the IRDA met the requirements of Division 17A of the relevant regulations and whether any grounds for rejection existed. Specifically, the Hearing Officer had to consider the provisions of regulation 17A.24, which outlines the Registrar's obligations and powers regarding the acceptance or rejection of an IRDA, including the possibility of rejection under section 41 of the Trade Marks Act.

The Hearing Officer found that a ground for rejection existed under section 41 of the Trade Marks Act. Consequently, the Registrar refused the extension of protection for the IRDA in relation to goods in classes 18 and 24. Protection was only extended in relation to class 1 goods. The Hearing Officer also directed that if a notice of appeal was served, protection would not be granted until the appeal was decided or discontinued, and the disposition of the IRDA would be in accordance with any court order.

Orders

Orders of the court

Full text does not contain this section.

Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

Regulation 17A.24 provides: 17A.24 Final decision on examination(1) The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:(a) it is not in accordance with this Division; or(b) there are grounds for rejecting it.(2) The Registrar may accept the IRDA subject to conditions or limitations.(3) The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:(a) it is not in accordance with this Division; or(b) there are grounds for rejecting it, in whole or in part. I have found that a ground for rejection of the Trade Mark exists under s 41. Accordingly, I refuse extension of protection of IRDA 2388553 for goods in classes 18 and 24. The International Bureau will be informed of the decision that protection is only extended in relation to the class 1 goods. If the Registrar is served with a notice of appeal, I direct that protection shall not occur until the appeal has been decided or discontinued and that the disposition of the IRDA be in accordance with the Court’s order or direction.Tracey BergerHearing OfficerOppositions and HearingsTrade Marks and Designs11 April 2025

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

International Registration Number	1750765
Trade Mark Number	2388553 (‘IRDA’)
Trade Mark	OVAL
Filing Date	27 July 2023[1]
Goods	Class 1: Organic compositions and substances for use in the textile industry; collagen for industrial purposes; proteins for use in the textile industry; collagen for use in the textile industry; chemicals for use in the textile industry; organic materials used as raw ingredients in the manufacture of textiles; organic compositions and substances for use in the manufacture of textiles; plant-based fibres used as a raw ingredient in the manufacture of textiles; collagen used as a raw ingredient in the manufacture of textiles; enzymes for use in the textile industry; reducing agents for the textile industry; collagen used as a raw ingredient in treating, dying, impregnating, waterproofing and brightening textiles; plant-based fibres used as a raw ingredient in in treating, dying, impregnating, waterproofing and brightening textiles; organic compositions and substances for manufacturing, treating, dying, impregnating, waterproofing and brightening textiles; chemicals for treating, dying, impregnating, waterproofing and brightening textiles; chemicals for use in the textile industry; chemicals for use in the manufacture of textiles; adhesives for use in the textile industry; adhesives for use in the manufacture of textiles. Class 18: Bags; handbags; tote bags; luggage; travelling bags; suitcases; backpacks; purses; wallets; rucksacks; bum bags; holdalls; all of the aforesaid goods being made from a collagen-based biomaterial; imitation leather. Class 24: Textiles; fabric; textile materials; textile fabrics; cloth; fabrics of organic fibres; household textiles; lining fabrics; waterproof fabrics; apparel fabrics; dressmaking fabrics; curtain fabrics; coated fabrics; knitted fabrics; woven fabrics; non-woven fabrics; furnishing and upholstery fabrics; textile fabrics for use in manufacture; textile fabrics for use in the manufacture of clothing; fabrics for use in the manufacture of hats; fabrics for use in the manufacture of footwear; fabrics for use in the manufacture of bags; fabrics for use in the manufacture of wallets; fabrics for use in the manufacture of purses; non-woven fabrics of natural fibres; fabrics for use in the manufacture of household textile articles. (‘Holder’s Goods’)