The Australian Telecommunications Commission v Digital Equipment Corporation

This matter concerns an opposition by Digital Equipment Corporation to the registration of the trade mark DIGITAL METROPOLITAN SERVICE, filed by The Australian Telecommunications Commission. The Australian Telecommunications Commission sought to register the mark for digital transmission services and other telecommunication services in class 38. The mark was advertised as accepted in Part B for telecommunication services, specifically data communication links, subject to a condition that registration would not grant exclusive rights to the words "DIGITAL" and "METROPOLITAN" separately. Digital Equipment Corporation opposed the registration on various grounds, including that the mark was not registrable under section 25 of the Trade Marks Act.

The primary legal issue before the delegate was whether the trade mark DIGITAL METROPOLITAN SERVICE was registrable in Part B of the Trade Marks Register. This required determining if the mark possessed inherent distinctiveness or was capable of becoming distinctive. The opponent argued that the individual words "DIGITAL," "METROPOLITAN," and "SERVICE," as well as the mark as a whole, were inherently non-distinctive and merely descriptive of the services offered. The applicant contended that the term "DIGITAL" was a "buzz" word with an ill-defined meaning, that the combined phrase was an arbitrary coupling of words, and that the mark was capable of becoming distinctive, particularly given its acceptance in Part B.

The delegate found that the words "DIGITAL," "METROPOLITAN," and "SERVICE" were descriptive and commonly used in relation to telecommunication services. The delegate agreed with the opponent that the phrase DIGITAL METROPOLITAN SERVICE had a clear and unambiguous meaning and was an apt description for digital network services built for metropolitan areas. Consequently, the delegate concluded that the mark, both individually and as a whole, lacked inherent distinctiveness in relation to the services and was not capable of becoming distinctive. The delegate noted that, in accordance with established legal principles, evidence of acquired distinctiveness would be irrelevant if the mark lacked inherent distinctiveness.

The delegate determined that the applicant had failed to satisfy the onus of proving that the trade mark DIGITAL METROPOLITAN SERVICE was capable of becoming distinctive. Accordingly, the opposition was upheld, and the delegate refused the registration of the mark in Part B. Costs were awarded to the opponent.