Re Notetry Limited

This matter concerned a trade mark application by Notetry Limited for a two-colour mark, YELLOW and SILVER, for goods including vacuum cleaners and parts. The applicant claimed convention priority based on a United Kingdom filing. The examiner raised objections under section 41 of the *Trade Marks Act 1995* (Cth), asserting the mark was not capable of distinguishing the applicant's goods from those of other traders, as other traders might reasonably wish to use these colours on similar goods. Despite submissions and evidence of use from the applicant, the examiner maintained the objection. The application proceeded to a hearing before a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the two-colour mark, YELLOW and SILVER, was capable of distinguishing the applicant's goods, specifically vacuum cleaners and their parts, from those of other traders, as required by section 41 of the *Trade Marks Act 1995*. This involved considering the mark's inherent adaptability to distinguish and, if that was insufficient, the combined effect of its inherent adaptability, its use, and any other relevant circumstances.

The delegate applied the test for inherent adaptability derived from *Clark Equipment Co v. Registrar of Trade Marks* and confirmed in *Blount Inc v. Registrar of Trade Marks*, which assesses the likelihood that other traders, acting honestly, would wish to use the mark on similar goods. While acknowledging that silver is not a particularly common colour for vacuum cleaners, the delegate found that two-colour combinations on such goods were popular, leading to a reasonably high likelihood that another trader might choose YELLOW and SILVER or similar colours without improper motive. Furthermore, the delegate noted that the colours were used to colour the goods themselves, and that the prominent use of the word mark "DYSON" on the goods would likely overwhelm the colours as a badge of origin in the eyes of the purchasing public. Consequently, the delegate found the mark had only a limited inherent adaptability to distinguish. The delegate then considered section 41(5), which allows for registration if the combined effect of inherent adaptability, use, and other circumstances demonstrates that the mark does or will distinguish the goods. However, the delegate found that the evidence of use was insufficient to overcome the limited inherent adaptability, particularly given the concurrent use of the "DYSON" word mark, which diminished the colours' effectiveness as a trade mark.

Accordingly, the delegate concluded that the trade mark was not capable of distinguishing the applicant's goods and refused the application for registration.