Sociability Pty Limited

Sociability Pty Limited ('the Applicant') sought to register a trade mark comprising the words "FINGER TAPE" in English and Japanese characters, surrounded by a circle, for use on bandages and related joint support products. The application was examined and an adverse report was issued, indicating a ground for rejection under section 41 of the *Trade Marks Act 1995* (Cth) because the trade mark was considered not capable of distinguishing the Applicant's goods from those of other persons. The Applicant responded with evidence of use, but the examiner maintained the objection. The Applicant then requested a hearing before a delegate of the Registrar of Trade Marks.

The delegate was required to determine whether the trade mark was capable of distinguishing the Applicant's goods, specifically considering whether it was inherently adapted to distinguish them or if it had acquired distinctiveness through use. The delegate also had to consider the provisions of section 41 of the Act, which outlines the criteria for rejecting an application where a trade mark is not capable of distinguishing. This involved assessing whether the trade mark was inherently adapted to distinguish the goods and, if not, whether its use had resulted in it actually distinguishing the goods as those of the Applicant.

Applying the principles established in *Clark Equipment Co v Registrar of Trade Marks* and subsequent cases, the delegate found that the words "FINGER TAPE" are descriptive of the goods and therefore not inherently adapted to distinguish them. The delegate concluded that the inclusion of Japanese characters and a circular device did not sufficiently alter the descriptive nature of the mark to give it a significance beyond its literal meaning. Furthermore, the delegate found the evidence of use to be limited and insufficient to demonstrate that the trade mark functioned as a badge of origin in Australia.

Consequently, the delegate was satisfied that there was a ground for rejecting the trade mark application under section 41(3) of the Act. Accordingly, trade mark application number 1846055 was rejected.