The College of Law Pty Limited

This decision concerns an application by The College of Law Pty Limited to register the trade mark THE COLLEGE OF LAW in Class 41 for "educational and training services". The examiner raised objections under s.41 of the *Trade Marks Act 1995* (Cth), arguing the mark was not capable of distinguishing the applicant's services from those of others, as other traders would likely need to use such descriptive words. The applicant sought to overcome this by providing evidence of use.

The primary legal issue before the delegate was whether the trade mark THE COLLEGE OF LAW was capable of distinguishing the applicant's educational and training services from those of other traders, as required by s.41 of the Act. This involved considering whether the mark was inherently adapted to distinguish the services, and if not, whether extensive use had made it distinctive in fact. The delegate had to determine if the mark met the criteria for acceptance under s.41(3), s.41(5), or s.41(6) of the Act.

The delegate reasoned that the phrase "THE COLLEGE OF LAW" is inherently descriptive of educational and training services in the field of law, and therefore not inherently adapted to distinguish the applicant's services under s.41(3). The delegate also found that the mark lacked the necessary "scintilla of inherent adaptation" to be considered under s.41(5), distinguishing it from prior cases where device elements or specific stylisation contributed to a low level of inherent distinctiveness. Consequently, the delegate considered the application under s.41(6), which requires evidence of use to establish factual distinctiveness. While acknowledging the significant use of the mark, particularly in New South Wales, the delegate concluded that the evidence was insufficient to demonstrate that the mark distinguished the applicant's services throughout Australia.

However, the delegate found that the evidence of use did establish sufficient notoriety for the mark within the State of New South Wales. Accordingly, the delegate indicated an intention to refuse the application for registration throughout Australia but would accept it if the applicant agreed to limit the claim to the State of New South Wales within one month of the decision.