Specialty Fashion Group Limited v Alpargatas S.A

Specialty Fashion Group Limited (the Opponent) opposed an application by Alpargatas S.A. (the Applicant) to register the trade mark TEST KITCHEN. The opposition was based on section 41 of the *Trade Marks Act 1995* (Cth), which concerns whether a trade mark is capable of distinguishing the applicant's goods or services. The Hearing Officer, sitting as a delegate of the Registrar of Trade Marks, considered the matter based on written submissions and evidence filed by both parties.

The primary legal issue before the Hearing Officer was whether the trade mark TEST KITCHEN was capable of distinguishing the Applicant's designated goods and services from those of other persons, as required by section 41(2) of the Act. This required an assessment of the trade mark's inherent adaptation to distinguish under section 41(3), and if that was insufficient, consideration of the combined effect of inherent adaptation and use under section 41(5), or solely use under section 41(6).

The Hearing Officer found that the ordinary signification of "test kitchen" is widely understood to mean a physical kitchen used for testing recipes and cooking processes. Applying the principles from *Clark Equipment Company v Registrar of Trade Marks* and *Cantarella Bros Pty Limited v Modena Trading Pty Limited*, the Hearing Officer determined that the trade mark TEST KITCHEN had little or no inherent adaptation to distinguish the applied-for goods and services. Consequently, the onus shifted to the Applicant to prove significant use of the trade mark as a trade mark. As the Applicant failed to establish this, the Hearing Officer found that the Opponent had established the section 41 ground of opposition.

Accordingly, the Hearing Officer refused to register the trade mark application and awarded costs to the Opponent as the successful party.