Registrar of Trade Marks v Muller

The Registrar of Trade Marks appealed to the High Court of Australia from a decision of the Full Court of the Federal Court of Australia, which had allowed an appeal by Mr. Muller against the Registrar's refusal to register a trade mark. The dispute concerned the registrability of the word "MULLEROID" as a trade mark for goods in Class 17, namely, plastic materials in the form of sheets, rods, tubes, and profiles. Mr. Muller sought to register this mark, but the Registrar refused on the grounds that the mark was not distinctive and was a common descriptive word for the goods.

The High Court was required to determine whether the word "MULLEROID" was inherently adapted to distinguish the goods of Mr. Muller from the goods of other persons, as required by section 26(1) of the Trade Marks Act 1955 (Cth). This involved considering whether the word was descriptive of the goods themselves or their origin, or whether it was capable of functioning as a trade mark to indicate a trade source. The court also had to consider the Registrar's argument that the word was likely to become a common name for the goods.

The court reasoned that the word "MULLEROID" was not inherently descriptive of plastic materials in sheets, rods, tubes, or profiles. While the suffix "-oid" might suggest a resemblance to something, it did not, in combination with "MULLER," describe the essential characteristics or nature of the goods. The court found that the word was capable of distinguishing the goods and that there was no evidence to suggest it was already a common descriptive term or was likely to become one. The principles applied centred on the interpretation of "inherently adapted to distinguish" and the assessment of whether a mark was descriptive or capable of indicating trade origin.

The High Court allowed the appeal, setting aside the order of the Federal Court and remitting the matter to the Registrar with a direction to proceed with the registration of the trade mark.