PET DRS PTY LTD - [2025] ATMO 174

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Trade mark application number 2501948 (classes 3 and 5) – Nourish Pet Co. (fancy) - in the name of PET DRS PTY LTD.

Delegate:

Nicole Worth

Representation:

Applicant: Self represented

Decision:

2025 ATMO 174

Trade Marks Act 1995 (Cth) – s 33 proceedings – grounds for rejection under ss 41 and 44 – trade mark not sufficiently inherently adapted to distinguish – trade mark deceptively similar to prior marks – one citation withdrawn – trade mark application rejected.

Background

This is a decision pursuant to s 33 of the Trade Marks Act 1995 (Cth) (‘Act’)[1] which provides that the Registrar of Trade Marks must, after examination, accept an application to register a trade mark unless satisfied that, among other matters, there are grounds for rejecting it.
[1] In this decision, all references to sections or regulations are references to sections of the Trade Marks Act 1995 (Cth) or regulations of the Trade Marks Regulations 1995 (Cth) (‘Regulations’), unless otherwise indicated.
On 26 November 2024 PET DRS PTY LTD (‘Applicant’) filed an application to register the trade mark detailed below.
Trade Mark:                  (‘Trade Mark’)
Application No.:     2501948
Filing Date:                26 November 2024
Goods:Class 3: perfumery products for pets; cosmetics for animals; deodorants for pets; perfumery for pets; dog skincare cosmetics; skincare cosmetics for dogs; dog washes [shampoos]
Class 5: dietary pet supplements in the form of pet treats; pet first-aid kits; pet first aid kits; vitamins for pets; dietary supplements for pets in the form of treats; dietetic pet food for medical purposes; vitamins for animals and pets; dietetic pet food for medical use; nutritional supplements for pets; pet food additives in the form of vitamins and minerals; medicated mouthwashes for pets; dietary supplements for animals; medicated shampoos for pets; medicated grooming preparations for pets; dietetic pet foodstuffs for medical use; dietetic pet foodstuffs for medical purposes; dietary supplements for pets; dog lotions for veterinary use; dog lotions for veterinary purposes; nutritional supplements for dogs; nutritional supplements for cats
The application was examined as required by s 33 and the examiner raised grounds for rejection under ss 41 and 44.
The examination report states in respect of the ground for rejection under s 41:
Your trade mark is NOURISH PET CO.
The Macquarie Dictionary defines the word NOURISH as being "to sustain with food or nutriment; supply with what is necessary for maintaining life". This indicates that the goods are provided by a company to nourish (sustain) pets.
Other traders should be able to use NOURISH PET CO in connection with goods or services similar to yours.
In respect of the ground for rejection under s 44 the examination report cites five prior trade marks. One of the cited trade marks has since lapsed and so is not considered in this decision. The summarised details of the remaining four are below, and their full specifications…

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 174
Decision Date: 1 September 2025

CaseChat Overview and Summary

This decision concerns an application by PET DRS PTY LTD for registration of the trade mark NOURISH PET CO. for goods in Classes 3 and 5, including perfumery products for pets, cosmetics for animals, and dietary pet supplements. The application was examined and the examiner raised grounds for rejection under sections 41 and 44 of the *Trade Marks Act 1995* (Cth). The matter was determined by a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the trade mark NOURISH PET CO. was sufficiently inherently adapted to distinguish the applicant's goods from those of other persons, and whether it was deceptively similar to any registered prior trade marks. Specifically, under section 41, the delegate had to consider if the trade mark was not capable of distinguishing the applicant's goods, either because it was not inherently adapted to distinguish and had not acquired distinctiveness through use, or because it was only to some extent inherently adapted to distinguish and would not, in light of its inherent distinctiveness, use, and other circumstances, distinguish the goods. Under section 44, the delegate had to assess whether the trade mark was deceptively similar to four cited prior registered trade marks.

The delegate reasoned that while the words "nourish" and "pet" are descriptive of the goods and their intended recipients, the composite phrase "NOURISH PET CO." had an unusual syntax that required some inference of meaning, thereby imbuing it with a degree of distinctiveness. However, the delegate found that this inherent distinctiveness was not sufficient. Applying the principles from *Clark Equipment Co v Registrar of Trade Marks* and *Cantarella Bros Pty Limited v Modena Trading Pty Limited*, the delegate considered the ordinary signification of the words in context. While the trade mark was not wholly devoid of inherent distinctiveness, it was found to be only to some extent, but not sufficiently, inherently adapted to distinguish. The delegate then considered the applicant's submissions regarding use, noting they were not in declaratory form but still commented on the moderate social media following and significant advertising spend. However, the provided details lacked specificity regarding the extent of exposure at the priority date, which was particularly relevant to the section 44 assessment.

The delegate concluded that the trade mark was not sufficiently inherently adapted to distinguish the applicant's goods and that the evidence of use did not overcome this deficiency. Furthermore, the delegate found the trade mark to be deceptively similar to prior registered marks, particularly in relation to the word "NOURISH" and the element "PET CO." The application for registration of the trade mark NOURISH PET CO. was therefore rejected.

Orders