Saramar LLC

This matter concerns a trade mark application by Saramar Corporation for the mark "sheer support" in relation to hosiery. The application was a divisional application, claiming priority from an earlier application filed on 2 March 1993. The examiner raised grounds for rejection under section 41 of the *Trade Marks Act 1995* (Cth), asserting that the trade mark was not inherently adapted to distinguish the designated goods. A hearing was conducted before a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether the trade mark "sheer support" was capable of distinguishing Saramar Corporation's hosiery from the goods of other traders, as required by section 41 of the Act. This involved considering the inherent distinctiveness of the mark and, alternatively, whether its use had acquired distinctiveness. The delegate was required to apply the provisions of section 41, which outline a tiered approach to assessing a trade mark's capacity to distinguish, starting with inherent adaptation and then considering use and other circumstances if inherent adaptation alone was insufficient.

The delegate reasoned that while the applicant argued "sheer support" was an evocative or emotive description, the words themselves had direct meanings relevant to hosiery. "Sheer" referred to the thinness of the fabric, and "support" in the context of hosiery referred to a device that holds up the wearer's legs. The delegate concluded that the combination of these words did not merely suggest a favourable quality but rather described the character or quality of the goods themselves, meaning the mark was not inherently adapted to distinguish. Consequently, the provisions of section 41(6) applied, requiring proof that the mark, through use, actually distinguished the goods at the filing date. The delegate found that the evidence of use, which predominantly showed the mark used in conjunction with the applicant's well-known "Kayser" brand, did not establish that "sheer support" alone distinguished the goods at the filing date.

Therefore, the delegate rejected the application under section 41(2) of the Act, finding that the trade mark was not capable of distinguishing the applicant's goods from those of other persons. The delegate also noted that even if the divisional status were waived to allow consideration of use from 1993, the evidence of use, particularly in conjunction with the "Kayser" brand, remained insufficient to satisfy the requirements of section 41(6).