Trade mark application number 2051829 (classes 9, 35, 36) – AUSTRALIAN BUSINESS GROWTH FUND – in the name of Australian Business Growth Fund Pty Ltd

This matter concerned trade mark application number 2051829 for the mark AUSTRALIAN BUSINESS GROWTH FUND, filed by Australian Business Growth Fund Pty Ltd. The application sought registration across classes 9, 35, and 36. The delegate of the Registrar of Trade Marks was required to determine whether the trade mark should be accepted for registration, considering potential grounds for rejection under the *Trade Marks Act 1995* (Cth).

The primary legal issue before the delegate was whether the trade mark AUSTRALIAN BUSINESS GROWTH FUND was capable of distinguishing the applicant's goods and services, as required by section 41 of the *Trade Marks Act 1995*. This involved assessing whether the mark was inherently adapted to distinguish or had acquired distinctiveness through use. The delegate also considered the effect of proposed limitations to the specification of goods and services.

The delegate found that the trade mark was not inherently adapted to distinguish the goods and services in question, particularly in relation to all services in class 36, advertising and marketing services in class 35, and certain downloadable publications and audio-visual content in class 9. While the mark was considered to be to some extent inherently adapted to distinguish other goods and services in class 9, this was not considered sufficient. The evidence of use filed by the applicant was deemed minimal and insufficient to establish distinctiveness as at the relevant date. The delegate also concluded that a proposed limitation to the specification, restricting the goods and services to those exclusively originating from the applicant, would not overcome the ground for rejection as it was considered artificial and would not materially affect the distinctiveness of the mark, given that other traders might legitimately wish to use the term in relation to similar offerings.

Consequently, the delegate was satisfied that there was a ground for rejecting the application under section 41 of the Act. However, pursuant to section 33(2) of the Act, the Registrar may accept an application subject to conditions or limitations. The applicant agreed to amend its specification by deleting classes 35 and 36 entirely and limiting class 9 to specific computer hardware and related services. The delegate accepted the application for possible registration subject to these amendments.