Thomas Magnete GMBH v Gardner Denver Thomas, Inc

This case involved an opposition by Gardner Denver Thomas, Inc. (the Opponent) to the registration of a trade mark by Thomas Magnete GMBH (the Applicant). The dispute concerned whether the trade mark "THOMAS" was capable of distinguishing the Applicant's goods, which included vacuum pumps, liquid pumps, air and gas compressors, blowers, and their associated parts and accessories. The matter was heard by Cristy Condon, a Hearing Officer.

The primary legal issue before the court was whether the trade mark "THOMAS" was capable of distinguishing the Applicant's designated goods from those of other persons, as required by section 41 of the Act. This involved determining whether the trade mark was inherently adapted to distinguish the goods and, if not, whether its use or intended use, or other circumstances, would cause it to distinguish the goods. The court also considered the onus on the Opponent to establish that the trade mark was not capable of distinguishing the Applicant's goods.

The Hearing Officer applied the principles established in *Clark Equipment Co v Registrar of Trade Marks* and *Cantarella Bros Pty Limited v Modena Trading Pty Limited*, focusing on whether other traders, acting honestly, would wish to use the word "THOMAS" in connection with similar goods due to its ordinary signification as a common surname. The evidence indicated that "THOMAS" is a common surname in Australia and that the Applicant's goods are not highly specialised. While the Applicant had significant sales of "Thomas Products" in Australia, the evidence did not demonstrate the use of the trade mark "THOMAS" *per se* to such an extent that it functioned as a badge of origin for the Applicant's goods. The Hearing Officer found that the Opponent had established a prima facie case under section 41(5) and that the Applicant had not sufficiently demonstrated that the trade mark, as applied for, distinguished its goods.

Consequently, the Hearing Officer refused to register the trade mark application and awarded costs to the Opponent as the successful party.