Spotlight Stores Pty Ltd, Re

This decision concerns an application by Spotlight Stores Pty Ltd to register the trade mark HIGHLAND TARTANS for textiles and textile goods, including fabrics and bed and table covers. The examiner objected to the mark's registrability under paragraphs 24(1)(c), (d), and (e) of the Act, arguing that it was directly descriptive of the character or quality of the goods, as "tartan" refers to a distinctive Scottish fabric pattern and "Highland" refers to a region in Scotland. The applicant contended that the mark should be considered in its totality, that the combination was not in common English usage, and therefore not directly descriptive.

The legal issues before the delegate were whether the mark HIGHLAND TARTANS qualified as an invented word, whether it was directly descriptive of the character or quality of the goods, and whether it possessed distinctiveness, either inherent or acquired through use, to warrant registration in Part A or Part B of the Register. The delegate considered the established principles for determining invented words, referencing cases such as *Eastman Photographic Materials Co. Ltd's Appn.* and *Howard Auto-Cultivators Ltd. v. Webb Industries Pty Ltd.*, which indicate that a combination of English words, even if not previously in use, is not necessarily an invented word if its constituent elements are manifest and its meaning transparent.

The delegate reasoned that while the combination HIGHLAND TARTANS might not be in common parlance, the individual words have clear meanings. "Tartan" is defined as a plaid fabric originating in the Scottish Highlands, and "Highland" refers to a specific region in northern Scotland. Applying the test from *Mark Foy's Ltd. v. Davies Coop & Co. Ltd.*, the delegate concluded that ordinary persons would understand the mark to describe tartan patterns or fabrics from the Scottish Highlands. Consequently, the mark was found to be unregistrable under paragraph 24(1)(d) as it directly referred to the character or quality of the goods and would be needed by other traders. The delegate also found that the evidence of sales and use did not establish factual distinctiveness sufficient to overcome the mark's lack of inherent distinctiveness, citing *Burger King Corporation v. The Registrar of Trade Marks*, which held that inherent unsuitability to distinguish cannot be cured by evidence of use.

Accordingly, the delegate refused the application for registration of the trade mark HIGHLAND TARTANS in either Part A or Part B of the Register.