Sartorius Stedim North America Inc

Sartorius Stedim North America Inc. applied to register the trade mark "Celsius" across a broad range of goods in classes 6, 7, 9, 10, 11, 12, 17, and 20. The application was examined by IP Australia, which raised objections under section 41 of the *Trade Marks Act 1995* (Cth), arguing that the mark was not inherently adapted to distinguish the specified goods from those of other traders. The examiner contended that "Celsius" directly describes a system for measuring temperature, and therefore other traders in goods related to temperature measurement, cooling, heating, insulation, and containment would likely need to use the term in the ordinary course of trade.

The legal issue before the delegate of the Registrar of Trade Marks was whether the trade mark "Celsius" was capable of distinguishing the applicant's goods from those of other persons, as required by section 41 of the *Trade Marks Act 1995* (Cth). This involved determining whether the mark was inherently adapted to distinguish the goods, or if, despite some inherent adaptation, it would not in fact distinguish the goods due to its ordinary signification and the likely use by other traders. The delegate had to consider the ordinary meaning of "Celsius" in relation to the specified goods and assess the likelihood that other traders would need to use the term honestly in connection with similar goods.

The delegate applied the principles established in *Clark Equipment Co v Registrar of Trade Marks* and *Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd*, which require consideration of the ordinary signification of the mark and the likelihood of other traders legitimately needing to use it. The delegate noted that the applicant had proposed deleting certain goods from the specification in response to the objections. The delegate found that the ordinary signification of "Celsius" is a system for measuring temperature. While the applicant argued that this was meaningless to consumers without a figure and unit, the delegate considered that the term directly refers to temperature measurement. The delegate also noted that some of the goods the applicant wished to retain were similar in nature to those the examiner had initially objected to, but the examiner had suggested amendments that would overcome the objections.

Ultimately, the delegate determined that the trade mark "Celsius" was not inherently adapted to distinguish the goods in class 9 relating to apparatus and instruments for measurement, control and regulation, sensing and detection. However, the applicant had proposed deleting these specific goods from the specification. Following this deletion, the delegate found that the remaining goods were sufficiently distinguished by the trade mark, and therefore the application was accepted for registration for the remaining goods.