Re Sakata Rice Snacks (Australia) Pty Ltd

This matter concerned a trade mark application by Sakata Rice Snacks (Australia) Pty Ltd for the word "SAKATA" in relation to various rice and cereal-based food products. The application was opposed by the Registrar of Trade Marks on the grounds that the mark lacked inherent distinctiveness, as "Sakata" is the name of a city in Japan known for agricultural production, including rice. The delegate of the Registrar was required to determine whether the trade mark was capable of distinguishing the applicant's goods from those of other traders under section 41 of the *Trade Marks Act 1995* (Cth).

The delegate considered the legal framework for assessing distinctiveness, drawing on principles established in cases such as *Blount Inc. v The Registrar of Trade Marks*. This involved a two-step process: first, determining if the mark was inherently adapted to distinguish the goods, and second, if not, considering whether its use had acquired distinctiveness. The delegate noted that a geographical name is not inherently adapted to distinguish goods if other traders might legitimately wish to use the name to describe their goods, particularly if those goods originate from or have a connection to the geographical location.

Applying these principles, the delegate found that "Sakata" is a recognised geographical name, and given the city's connection to rice production and its status as a port for agricultural distribution, it had an obvious or potential connection with the applicant's designated goods. Consequently, the delegate concluded that the mark was not inherently adapted to distinguish the goods. The delegate then examined whether the applicant had established acquired distinctiveness under subsection 41(6)(a) of the Act, considering evidence of use in Australia and overseas. Despite the applicant's substantial market share in Australia for rice crackers, the delegate found that the period of use in Australia was minimal and post-dated the application filing date. Furthermore, the delegate determined that the reputation of the applicant's parent company in Japan, while long-standing, did not translate into recognition of the word "SAKATA" as a badge of trade origin in the Australian marketplace.

Accordingly, the delegate found that the applicant had failed to establish that the trade mark distinguishes the designated goods. Therefore, Trade Mark application 673556 was rejected pursuant to subsection 33(3) of the *Trade Marks Act 1995*.