Trade mark application number 2091303 (class 30) – YORK ST. - in the name of Zuru (Singapore) Pte Ltd

This matter concerned an appeal from a decision of the Trade Marks Office to reject an application for the trade mark YORK ST. in class 30, filed by Zuru (Singapore) Pte Ltd. The application sought to register the trade mark for goods including confectionery, biscuits, cakes, and other baked goods. The Registrar of Trade Marks had rejected the application on the grounds that the mark was not capable of distinguishing the applicant's goods from those of other persons, pursuant to section 41 of the *Trade Marks Act 1995* (Cth).

The primary legal issue before the Court was whether the trade mark YORK ST. was, to some extent, inherently adapted to distinguish the applicant's goods. The Court was required to consider the nature of the geographical name "York Street" and its potential to be used by other traders in relation to similar goods. The absence of any evidence of use of the mark by the applicant was also a relevant factor in the determination.

The Court reasoned that "York Street" is a common geographical name, and its use as a trade mark for confectionery and baked goods would likely be seen by consumers as descriptive of a place of origin or a style of product, rather than as an indicator of a single source. While the applicant argued that the mark was inherently adapted to distinguish, the Court found that the geographical nature of the name weighed against this inherent adaptability. Without evidence of use demonstrating that the mark had acquired distinctiveness in the marketplace, the Court concluded that the ground for rejection under section 41 was made out.

Consequently, the appeal was dismissed, and the trade mark application was rejected.