Standard Homeopathic Company Inc

This decision concerns an application by Standard Homeopathic Company Inc for registration of the trade mark CALMS FORTE for pharmaceutical preparations, specifically medication for the temporary symptomatic relief of simple nervous tension and insomnia. The application was initially rejected by the examiner on grounds arising under section 41 of the *Trade Marks Act 1995* (Cth), which pertains to the capacity of a trade mark to distinguish an applicant's goods or services. The applicant sought a hearing to argue for the registrability of the mark.

The legal issue before the delegate of the Registrar of Trade Marks was whether the trade mark CALMS FORTE was capable of distinguishing the applicant's designated goods from those of other persons, as required by section 41 of the Act. This involved assessing whether the mark was inherently adapted to distinguish the goods and, if not, whether its use or other circumstances had caused it to become distinctive. The delegate also considered whether the term "forte" contributed to the distinctiveness of the mark, and whether the word "calms" was inherently adapted to distinguish the goods.

The delegate reasoned that while "forte" was a descriptive term common in the pharmaceutical trade, the word "calms" was not ordinarily used to describe medication for nervous tension or insomnia, and was therefore to some extent inherently adapted to distinguish these goods. Consequently, the assessment fell under section 41(5) of the Act, which requires consideration of the inherent distinctiveness in conjunction with the use of the trade mark and any other relevant circumstances. The delegate found that extensive use of CALMS FORTE in the United States since 1960, supported by registrations and declarations from US trade operatives, demonstrated the mark's distinctiveness in a similar market. Applying the principle that distinctiveness in one market tends to show capability of distinctiveness in another similar market, and noting the similarity between the US and Australian markets for these types of medications, the delegate concluded that the trade mark was capable of distinguishing the specific goods for which it had been used overseas.

Accordingly, the delegate proposed to accept the trade mark for registration, subject to the applicant agreeing to limit the specification of goods to "medication for the temporary symptomatic relief of simple nervous tension and insomnia." The applicant was given 28 days to agree to this amendment, failing which the application would be rejected for the broader specification.