Trade mark application number 1956914 (classes 9, 12) – DOM - in the name of Domino's Pizza Enterprises Limited

This matter concerned an application by Domino's Pizza Enterprises Limited for registration of the trade mark DOM in classes 9 and 12. The application was opposed by a third party. The delegate of the Registrar of Trade Marks had previously found that the trade mark was not capable of distinguishing the applicant's goods in class 9, but had allowed an amendment to the specification of goods in that class. The applicant sought review of the delegate's decision.

The primary legal issue before the court was whether the trade mark DOM was capable of distinguishing the applicant's goods in class 9, within the meaning of section 41 of the *Trade Marks Act 1995* (Cth). This involved considering whether the mark was inherently adapted to distinguish the applicant's goods or whether it had acquired distinctiveness through use. The court also considered the effect of the amendment to the specification of goods in class 9.

The court reasoned that the mark DOM, when considered in relation to the amended specification of goods in class 9, which included items such as "computer software for ordering food and beverages" and "electronic devices for ordering food and beverages," was capable of distinguishing the applicant's goods. The court found that the mark was not descriptive of the goods and had a degree of inherent adaptability to distinguish. Furthermore, evidence of extensive use and promotion of the mark by the applicant supported a finding of acquired distinctiveness. The court applied the principles established in case law regarding the assessment of distinctiveness under section 41, including the consideration of whether a mark is inherently adapted to distinguish or has acquired distinctiveness through use.

The court allowed the appeal, set aside the delegate's decision in relation to class 9, and remitted the application to the Registrar for acceptance of the amended specification of goods in class 9. The application in class 12 was not in dispute and proceeded to acceptance.