Trade mark application number 2063359 and 2065970 (classes 9 and 42) – SMARTSCAN - in the name of Expensify, Inc.

This matter concerned trade mark applications numbers 2063359 and 2065970, filed by Expensify, Inc. for the mark SMARTSCAN in classes 9 and 42. The applications were opposed, and the hearing officer was required to determine whether the trade mark was registrable.

The primary legal issue before the hearing officer was whether the trade mark SMARTSCAN was inherently capable of distinguishing the applicant's goods and services, as required by section 41 of the *Trade Marks Act 1995* (Cth). The hearing officer also considered the "combined effect" of the mark's inherent adaptation to distinguish, its use or intended use, and any other relevant circumstances to determine if it would, in fact, distinguish the applicant's offerings from those of other persons.

The hearing officer found that while the trade mark SMARTSCAN was not directly descriptive of the applicant's goods and services, it fell closer to the descriptive end of the spectrum than the allusive end, meaning it possessed only a limited degree of inherent distinctiveness. However, the hearing officer was satisfied that the extensive evidence of use of the trade mark in Australia and globally since at least 2012, coupled with significant year-on-year growth in customer numbers, revenue, and downloads of the applicant's app, demonstrated that the mark was in fact capable of distinguishing the applicant's goods and services.

Accordingly, the hearing officer accepted both trade mark applications, subject to an appropriate endorsement being added to the Register.