Portmans Consolidated Pty Ltd, Re

Portmans Consolidated Pty Ltd applied to register the trade mark UTILITY for women's clothing and other goods in Class 25. An objection was raised under section 24(1)(d) of the Trade Marks Act on the basis that the word UTILITY directly described the goods as being useful or functional, and therefore lacked inherent distinctiveness. The applicant provided evidence of substantial use of the mark in relation to women's clothing since 1983, arguing that this use had established factual distinctiveness. The hearing was conducted before a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the trade mark UTILITY possessed inherent distinctiveness for clothing, and if not, whether the evidence of use had established factual distinctiveness such that the mark should be registered in either Part A or Part B of the Register. The applicant contended that UTILITY was not directly descriptive of clothing and that, in light of the evidence, it was capable of becoming distinctive.

The delegate considered dictionary definitions of UTILITY, including those from The Macquarie Dictionary, Webster's Third New International Dictionary, the Supplement to The Oxford English Dictionary, and the Australian Concise Oxford Dictionary. These definitions established that UTILITY, both as a noun and an adjective, directly referred to usefulness, practicality, and being designed for utility rather than beauty. The delegate found that the word was not only an apt description of clothing designed on practical lines but also a reasonably common and popular choice for such goods. Consequently, the delegate concluded that UTILITY lacked any inherent distinctiveness for clothing. Applying the principles from *Clark Equipment Company v Registrar of Trade Marks*, the delegate determined that the mark was not fit for registration for clothing, irrespective of any factual distinctiveness.

Accordingly, the delegate refused the application for registration of the trade mark UTILITY in both Part A and Part B of the Register.