The American Tobacco Company, Re

This matter concerned an application by The American Tobacco Company for registration of a trade mark for tobacco, cigarettes, and smokers' supplies. An examiner objected to the mark's registrability under paragraph 24(1)(a) of the Trade Marks Act 1955, on the grounds that it consisted of a person's name not represented in a special or particular manner. The applicant argued that its corporate name, as depicted in the mark, was rendered in a unique and special way and proposed a disclaimer. The examiner maintained the objection, finding the script used was not distinctive. The hearing was held before a delegate of the Registrar of Trade Marks.

The legal issues before the delegate were whether the trade mark, being the applicant's corporate name, was capable of distinguishing the applicant's goods from those of other persons, as required by section 41 of the Trade Marks Act 1995. This involved determining if the mark was inherently adapted to distinguish the goods, and if not, whether its distinctiveness could be established through use or other circumstances. Specifically, the delegate had to consider if the representation of the name was sufficiently special or particular to qualify for registration, and if extensive international use could establish a reputation sufficient to overcome a lack of inherent distinctiveness in Australia.

The delegate reasoned that for a name to be represented in a special or particular manner, its depiction must go beyond ordinary typefaces or scripts and possess an exceptional appearance that strikes the eye as peculiar. Citing relevant case law, the delegate found that the applicant's mark, while potentially originating from handwriting, was not rendered in a novel or unique style and was similar to known typefaces. Consequently, the mark was deemed incapable of distinguishing the designated goods and likely to be desired by other traders. The delegate also considered section 41(5) and 41(6) of the Act. Despite evidence of extensive use and reputation in the United States and other overseas markets, the delegate concluded that because the mark lacked any inherent adaptability to distinguish, this international use could not be taken into account under section 41(5) in the absence of use in Australia. Similarly, under section 41(6), evidence of overseas use alone was insufficient to establish distinctiveness in the Australian market.

The delegate rejected the application for registration of the trade mark, finding it was not capable of distinguishing the applicant's goods from those of other persons.