The University of Sydney v the University of Wollongong

The University of Sydney (the Applicant) opposed the registration of a trade mark by the University of Wollongong (the Opponent) for the name "Sydney Business School". The dispute concerned whether the Opponent's use of this name had acquired distinctiveness as a trade mark, entitling it to registration, or if it was merely descriptive. The matter was heard by Hearing Officer Debrett Lyons.

The primary legal issue before the Hearing Officer was whether the Opponent had established that the trade mark "Sydney Business School" distinguished its goods and services as required by section 41 of the relevant Act. This involved assessing whether the name, through use, had become a badge of origin for the Opponent's business school, or if it was perceived by the public as a generic or descriptive term. The Opponent also pursued grounds based on sections 42, 43, and 60 of the Act, but these were treated as abandoned as they were not pressed at the hearing.

The Hearing Officer found that many instances of the Opponent's use of "Sydney Business School" were not trade mark use but rather simple descriptive use, akin to naming a faculty or department. Other examples of use were considered flawed. Crucially, the Hearing Officer concluded that the trade mark was not inherently adapted to distinguish the goods and services, and that members of the public, without additional cues such as the Applicant's crest or the words "University of Wollongong," would be unable to associate the name "Sydney Business School" with a particular trader. The Hearing Officer determined that the words "Sydney Business School" made no independent contribution to the trade mark function of any combined mark, and that the Opponent had failed to establish that the trade mark, as a matter of fact, distinguished its goods and services as at the priority date.