Re National Geographic Society

The National Geographic Society (the applicant) sought to register a trade mark consisting of the word "NATIONAL GEOGRAPHIC" and the distinctive yellow rectangle. The Registrar of Trade Marks (the respondent) opposed the registration on the ground that the mark was not capable of distinguishing the applicant's goods and services from those of other persons. The matter came before T. Williams.

The primary legal issue before the Court was whether the trade mark "NATIONAL GEOGRAPHIC" was inherently adapted to distinguish the applicant's goods and services, or whether it had acquired distinctiveness through use. The Registrar argued that the words "NATIONAL GEOGRAPHIC" were descriptive of the nature of the applicant's activities, namely the dissemination of geographical information and related content, and therefore lacked inherent distinctiveness.

The Court considered the evidence of extensive use of the trade mark by the applicant, both in Australia and internationally, and the significant public recognition of the mark as indicating the source of the applicant's goods and services. The Court applied the principles established in trade mark law concerning inherent distinctiveness and acquired distinctiveness, noting that a mark may be registered if it is either inherently adapted to distinguish or has acquired distinctiveness through use. The Court found that the evidence overwhelmingly demonstrated that the trade mark had acquired distinctiveness in the minds of the relevant public.

The Court ordered that the opposition be dismissed and that the trade mark be registered.