SPHP(IP) Pty Ltd

SPHC(IP) Pty Ltd applied to register a trade mark consisting of a blue curved stripe device, referred to as the "Parkroyal Wave logo," for services including hotel and motel operation, management, and provision of accommodation, food, and conference facilities. The examiner raised grounds for rejection under section 41 of the Trade Marks Act 1995, arguing the mark lacked inherent distinctiveness as it was a common decorative feature likely to be used by other traders. The applicant provided evidence of use, but a Principal Examiner considered this insufficient and proposed proceeding under section 41(6), deeming the mark "mere corporate livery" and suggesting the word "PARKROYAL" was the true distinguishing feature. The applicant's agent requested a decision on the written record.

The legal issues before the delegate were whether the blue curved stripe device was capable of distinguishing the applicant's services from those of other traders, as required by the Trade Marks Act 1995. Specifically, the delegate had to determine if the mark possessed sufficient inherent adaptation to distinguish, and if not, whether evidence of use had established distinctiveness. This involved considering the application of sections 41(5) and 41(6) of the Act, and the principles established in cases such as *Blount Inc v The Registrar of Trade Marks* (the Oregon case) and *Registrar of Trade Marks V Woolworths*.

The delegate reasoned that while the blue wave device met the technical definition of a "sign" under the Act, it possessed only a "scintilla" of inherent adaptation to distinguish. The delegate found the device not to be inherently memorable and, when considered alongside the colour blue, it was deemed to have only a small degree of novelty. Consequently, the delegate concluded that section 41(5) of the Act applied, requiring consideration of the combined effect of its limited inherent adaptation and the evidence of use. Despite substantial sales figures presented by the applicant, the delegate found the evidence insufficient to demonstrate that the public recognised the wave device as a trade mark or a badge of origin, particularly as it was consistently used alongside the registered word mark "PARKROYAL" and appeared to be part of the applicant's corporate livery. The delegate was not convinced that the sales figures clearly related to the wave device itself, nor that it had acquired distinctiveness as a "limping mark."

Ultimately, the delegate rejected trade mark application number 753367. The delegate found that the applicant had not established that the trade mark did or would distinguish its services, as required by section 41(5)(a) of the Act, and therefore, in accordance with section 41(2), the application was refused.