Trade mark application number 2339185 (class 1)

The Australian Trade Marks Office (the Office) refused an application for registration of the trade mark "PRO-BIOTIC" in Class 1 (chemical products for use in industry, science, photography, agriculture, horticulture, forestry; raw artificial resins, raw plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesive preparations). The applicant, who was not named in the provided text, sought to appeal this decision to the Federal Court of Australia.

The primary legal issue before the Court was whether the trade mark "PRO-BIOTIC" was inherently deceptive or misleading, and therefore disentitled to registration under section 41(1) of the *Trade Marks Act 1995* (Cth). Specifically, the Court had to determine if the mark, when applied to goods in Class 1, would be likely to deceive or cause confusion as to the nature, quality, or characteristics of those goods.

The Court reasoned that the term "pro-biotic" is widely understood in common parlance to refer to live microorganisms that confer a health benefit. Given that Class 1 includes chemical products for use in agriculture and horticulture, and chemical substances for preserving foodstuffs, the Court found that the use of "PRO-BIOTIC" in relation to such goods would be likely to mislead consumers into believing that the products contained live microorganisms conferring a health benefit, when this was not necessarily the case. The Court applied the principle that a trade mark should not be registered if it is inherently deceptive or misleading in relation to the goods or services for which registration is sought.

The appeal was dismissed, and the decision of the Australian Trade Marks Office to refuse registration was affirmed.