Trade mark application number 2460225 (class 33) –
[2025] ATMO 144
•23 July 2025
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2460225 (class 33) – MOUNT HILL - in the name of Daveamy Pty Ltd as trustee for McWilliam Family Brands
Delegate: | Timothy Brown |
Representation: | Applicant: Written submissions prepared by Madeline Connolly and Daniel Wilson of Spruson and Ferguson |
Decision: | 2025 ATMO 144 Trade Marks Act 1995 (Cth) – s 33 proceedings – s 41 considered – trade mark capable of distinguishing – trade mark application accepted. |
Background
This decision concerns an application made on 21 June 2024 by Daveamy Pty Ltd as trustee for McWilliam Family Brands (‘Applicant’) to register the following trade mark:
Trade Mark Number: 2460225 (‘Application’)
Trade Mark: MOUNT HILL (‘Trade Mark’)
Goods: Class 33: Grape-based wines (‘Applicant’s Goods’).[1]
[1] The specification at the time of filing was Class 33: Alcoholic beverages, except beers; wines. The Applicant requested the goods be amended to grape-based wines on 17 April 2025.
The Application was examined as required by s 31 and a ground for rejection was raised under s 41(3) of the Trade Marks Act 1995 (Cth)[2]. The basis for the ground for rejection was that the Trade Mark is not capable of distinguishing the specified goods because MOUNT HILL is the name of a geographical area in Western Australia that, in the context of alcoholic beverages, indicates the goods are produced in, or sourced from, Mount Hill, Western Australia.
[2] Unless stated otherwise, each reference to a section or regulation is a reference to the Trade Marks Act 1995 (Cth) (‘Act’) or Trade Marks Regulations 1995 (Cth) (‘Regulations’).
The Applicant responded with submissions on 17 September 2024. Subsequently, the examiner informed the Applicant that the ground for rejection was maintained on 18 September 2024. The ground for rejection was then maintained over the course of two further reports following which the Applicant requested to be heard by written submissions. Written submissions prepared by Madeline Connolly and Daniel J Wilson of Spruson and Ferguson were filed on 17 April 2025. The matter was then allocated to me decide in my capacity as a delegate of the Registrar of Trade Marks (‘Registrar’).
As a preliminary observation, I note that this decision is not a review of the examiner’s decision, but a fresh consideration of the ground for rejection.
Section 41
Section 41 of the Act provides:
(1) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the applicant’s goods or services in respect of which the trade mark is sought to be registered (the designated goods or services) from the goods or services of other persons.
Note: For goods of a person and services of a person see section 6.
(2) A trade mark is taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons only if either subsection (3) or (4) applies to the trade mark.
(3) This subsection applies to a trade mark if:
(a) the trade mark is not to any extent inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the applicant has not used the trade mark before the filing date in respect of the application to such an extent that the trade mark does in fact distinguish the designated goods or services as being those of the applicant.
(4) This subsection applies to a trade mark if:
(a) the trade mark is, to some extent, but not sufficiently, inherently adapted to distinguish the designated goods or services from the goods or services of other persons; and
(b) the trade mark does not and will not distinguish the designated goods or services as being those of the applicant having regard to the combined effect of the following:
(i) the extent to which the trade mark is inherently adapted to distinguish the goods or services from the goods or services of other persons;
(ii) the use, or intended use, of the trade mark by the applicant;
(iii) any other circumstances.
Note 1: Trade marks that are not inherently adapted to distinguish goods or services are mostly trade marks that consist wholly of a sign that is ordinarily used to indicate:
(a) the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services; or
(b) the time of production of goods or of the rendering of services.
Note 2: For goods of a person and services of a person see section 6.
Note 3: Use of a trade mark by a predecessor in title of an applicant and an authorised use of a trade mark by another person are each taken to be use of the trade mark by the applicant (see subsections (5) and 7(3) and section 8).
(5) For the purposes of this section, the use of a trade mark by a predecessor in title of an applicant for the registration of the trade mark is taken to be a use of the trade mark by the applicant.
Note 1: For applicant and predecessor in title see section 6.
Note 2: If a predecessor in title had authorised another person to use the trade mark, any authorised use of the trade mark by the other person is taken to be a use of the trade mark by the predecessor in title (see subsection 7(3) and section 8).
I note that the relevant date of assessment is the filing date of the Application, being 21 June 2024. Section 33(1) also provides that the Registrar must accept an application for registration unless satisfied that there are grounds for rejecting it or the application has not been made in accordance with the Act.
Whether a trade mark is capable of distinguishing requires consideration of the extent to which the trade mark is inherently adapted to distinguish those goods from the goods of other traders. This is determined by reference to whether other traders are likely, in the ordinary course of trade and without any improper motive, to desire to use the trade mark, or a mark so nearly resembling it, in connection with their own goods.[3] The majority of the High Court in Cantarella Bros Pty Limited v Modena Trading Pty Limited (‘Cantarella)[4] indicated that this test is a two-step process. First, it necessary to establish the ordinary signification, or ordinary meaning, of the trade mark in Australia to those concerned with the relevant goods.[5] Then once the ordinary signification is established, consideration turns to whether other traders may legitimately desire to use the word in respect of their goods.[6]
[3] Clark Equipment Co v Registrar of Trade Marks (1964) 111 CLR 511, 514 (Kitto J) (‘Clark Equipment’).
[4] [2014] HCA 48 (French CJ, Hayne, Crennan and Kiefel JJ).
[5] Ibid [71].
[6] Ibid.
Geographical names are typically not prima facie capable of distinguishing because as trade marks their use will rarely transcend their ordinary meaning as a geographical name.[7] As explained by Kitto J in Clark Equipment:
The consequence is that the name of a place or of an area, whether it be a district or a county, a state or a country, can hardly ever be adapted to distinguish one person’s goods from the goods of others when used simpliciter or with no addition save a description or designation of the goods, if goods of the kind are produced at the place or in the area or if it is reasonable to suppose that such goods may in the future be produced there. In such a case, the name is plainly not inherently, i.e. in its own nature, adapted to distinguish the applicant’s goods…[8]
[7] Clark Equipment (n 3) 515.
[8] Ibid.
Many other decisions have considered whether geographic names are inherently adapted to distinguish. For example, in Colorado Group Ltd v Strandbags Group Pty Ltd the trade mark COLORADO was not considered inherently adapted to distinguish backpacks, bags, wallets and purses.[9] Other examples where geographic names were not considered distinctive include OXFORD for printed publications,[10] OREGON for saw machines and parts,[11] and PERSIAN FETTA for dairy products.[12]
[9] [2007] FCAFC 184, [128] (Kenny, Gyles and Allsop JJ).
[10] Oxford University Press v Registrar of Trade Marks [1990] FCA 251 (Lockhart, Jenkinson and Gummow JJ) (‘Oxford University Press’).
[11] Blount Inc v Registrar of Trade Marks [1998] FCA 440 (Branson J).
[12] Yarra Valley Dairy Pty Ltd v Lemnos Foods Pty Ltd [2010] FCA 1367 (Middleton J).
This is not to say that all signs that reference geographical locations are unsuitable for registration merely because a location exists with the same name as the trade mark.[13] At the outset, the focus must first be on whether the ordinary meaning of trade mark would be understood as a geographical name by those concerned with the relevant goods.
[13] Re Magnolia Metal Co’s Trade Mark (1897) 14 RPC 621, 627-628 (Lindsey, Lops and Rigby LJJ).
Ordinary Signification
Mount Hill is a small location in Western Australia, a relatively short distance from the town of Geraldton. The Applicant acknowledges that MOUNT HILL is a geographic location in Western Australia, but contends it does not have the ordinary meaning of a geographic name to persons in Australia who consume or trade in the Applicant’s Goods, as the suburb is sparsely populated with only 41 residents,[14] and there no evidence of a reputation or association between the location and wine.
[14] The Applicant refers to: Australian Bureau of Statistics, Mount Hill: 2016 Census All persons QuickStats < (online at 17 April 2025) < Statistics>.
I note that MOUNT HILL does not have any other obvious meaning beyond its geographic significance. The constituent elements are known English words, with MOUNT being a verb for climbing and, amongst other things, a reference to a mountain, and the word HILL being defined as a raised area of land. Both terms are also used as surnames. The construction of the sign itself, with MOUNT being used as a prefix, is also suggestive of a geographic reference.[15] I am unaware of any use of the combined words by third parties or any meaning of the combined words beyond their geographic meaning. Whether the relevant persons who consume or deal with the Applicant’s Goods would recognise the geographic meaning of MOUNT HILL and that I should consider this to amount to the ordinary signification of the Trade Mark is less clear.
[15] See, for example: Mount Isa, Mount Pleasant, Mount Vernon or Mount Kembla.
It is noteworthy that, in several decisions, the limited size of a geographic locality has not precluded a determination that the ordinary signification of the sign refers to that locality. For example, in Henley Arch Pty Ltd v Henley Constructions Pty Ltd[16] the sign HENLEY was not considered inherently adapted to distinguish building and construction services. HENLEY is, amongst other things, the name of several small geographic localities in Australia (including a small suburb of around 478 people), and Justice Anderson noted that traders from a geographical location called HENLEY would want to refer to that location as the source of their services.[17] In R & R C Bond (Wholesale) Ltd[18] the Hearing Officer found that CHURCHILL, being the name of a town of around 4500 people in Victoria, had an ordinary signification as a Victorian town to the relevant class of persons.[19] Similarly, in INDITEX, S.A., [20] the sign ZARA was considered to possess the ordinary signification of a small rural location in New South Wales in connection with hospitality services.[21]
[16] [2021] FCA 1369 (Anderson J).
[17] Ibid [822]-[824].
[18] [2021] ATMO 36 (Hearing Officer Wilson).
[19] Ibid [16].
[20] [2024] ATMO 11 (Hearing Officer Nicholas Smith).
[21] Ibid [14].
In this instance, although the mere fact that MOUNT HILL is a geographic name is not determinative, I consider that people from MOUNT HILL and the surrounding areas, who consume or deal in wine, would recognise MOUNT HILL as a geographic name. In this context, I am satisfied that the ordinary signification of the Trade Mark is a geographical location in Western Australia, and that when used in connection with the Applicant’s Goods, the Trade Mark indicates that the Applicant’s Goods derive from or are provided to the locality of MOUNT HILL.
Likelihood of other traders to desire to use the trade mark
Turning to the question of whether other traders are likely to desire to use MOUNT HILL in connection with the Applicant’s Goods, the Applicant submits that there is no evidence of other traders producing wine in the Mount Hill region, and that the likelihood of other traders producing wine in the location is remote. In support, the Applicant referred me to a map of Western Australia’s recognised wine regions sourced from and emphasised that Mount Hill is located hundreds of kilometres away from any recognised wine region in Western Australia.
Whether other traders are likely to use a trade mark for its geographic meaning also requires consideration of whether the goods might reasonably be produced in the area in the future.[22] As explained by Gummow J in Oxford University Press:
The point is if goods of the kind in question are produced at the particular place or in the area, or if it is reasonable to suppose that such goods in the future will be produced there, other traders have a legitimate interest in using the geographical name to identify their goods, and it is this interest which is not to be supplanted by permitting any one trader to effect trade mark registration[23]
[22] Clark Equipment (n 3) 515.
[23] Oxford University Press (n 10) [41].
For this reason, geographic names that are seats of manufacture, industrial centres, regions of agricultural production, or that are made in respect of common services, are unlikely to be considered inherently adapted to distinguish. By way of example, in Henley, Anderson J stated:
a suburb-named trade mark is likely to be needed and used by traders without improper motive for the ordinary signification of their goods and services if the registration sought is in relation to common goods or services of the kind provided in suburbs. Building and construction services and architectural, engineering, design, drafting and interior design services as at the priority date, 18 December 2006, are services of a kind which are commonly found in suburbs throughout Australia being delivered by multiple providers.[24]
[24] Henley (n 16) [822].
In this instance, the material provided by the Applicant indicates that MOUNT HILL is far removed from any region that currently produces wine in Australia. The closest region appears to be the Swan District, which is several hundred kilometres south of MOUNT HILL. As to whether wine might be produced in MOUNT HILL in the future, the Applicant submits wine is not the kind of good that can be produced in a small suburb. Factors such as climate conditions, soil suitability, water availability, specialised equipment and labour expertise indicate that a remote locality like MOUNT HILL would not be suitable for commercial wine production. The Applicant also refers me to the latitudes (between 30 degrees and 50 degrees) where the majority of wine grapes are known to grow.
There is some force to the Applicant’s submissions. Neither MOUNT HILL nor nearby regions are recognised for commercial wine production. There is no evidence before me of historical wine-making in the area or any evidence of the area's suitability for growing grapes. There is also no evidence before me of any broader agricultural industry in the region. Although wine is a widely available retail product, its production in Australia depends on specific geographical and agricultural conditions, resulting in limited and recognised regions where it can be produced. Ultimately, there is no material before me that indicates MOUNT HILL is a location suitable for producing wine, such that I might find it reasonable to suppose that wine could be produced in the area at some point in the future.
For these reasons, the likelihood of other traders desiring to use the Trade Mark for the sake of its ordinary signification in relation to the Applicant’s Goods is remote. Accordingly, I am satisfied that the Trade Mark is inherently adapted to distinguish the Applicant’s Goods from those of other traders.
Decision
Section 33 of the Act provides:
Application accepted or rejected
(1) The Registrar must, after the examination, accept the application unless he or she is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it.
Note: For this Act see section 6.
(1) The Registrar may accept the application subject to conditions or limitations.
Note: For limitations see section 6.
(3) If the Registrar is satisfied that:
(a) the application has not been made in accordance with this Act; or
(b) there are grounds under this Act for rejecting it;
the Registrar must reject the application.
(4) The Registrar may not reject an application without giving the applicant an opportunity of being heard.
Note: For applicant see section 6.
I am not satisfied that there is a ground for rejecting the application to register the Trade Mark under s 41. Accordingly, under s 33(1) I accept the trade mark application 2460225 for registration.
Timothy Brown
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs
23 July 2025
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