Trade mark application number 2460225 (class 33) – - [2025] ATMO 144

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…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2025] ATMO 144
Decision Date: 23 July 2025

CaseChat Overview and Summary

This decision concerns an application by Daveamy Pty Ltd as trustee for McWilliam Family Brands to register the trade mark MOUNT HILL for grape-based wines in Class 33. The application was initially examined and a ground for rejection was raised under section 41(3) of the *Trade Marks Act 1995* (Cth), on the basis that MOUNT HILL is a geographical area in Western Australia and would therefore indicate that the goods originate from that location, thus not being capable of distinguishing the applicant's goods. The applicant responded with written submissions, and the matter was referred to a delegate of the Registrar of Trade Marks for a fresh consideration.

The delegate was required to determine whether the trade mark MOUNT HILL is capable of distinguishing the applicant's grape-based wines from those of other persons, as mandated by section 41(1) of the Act. This involved assessing whether the trade mark is inherently adapted to distinguish the goods and whether other traders would likely desire to use the mark in the ordinary course of trade. The delegate also considered the ordinary signification of the trade mark in Australia in relation to grape-based wines and the likelihood of future production of wine in the Mount Hill region.

In reaching the decision, the delegate applied the principles established in *Cantarella Bros Pty Limited v Modena Trading Pty Limited*, which requires first establishing the ordinary meaning of the trade mark and then considering whether other traders might legitimately desire to use it. While acknowledging that MOUNT HILL is a geographical location in Western Australia, the delegate found that, despite its existence, the ordinary signification of the trade mark to those concerned with grape-based wines would be its geographical meaning. However, the delegate was satisfied that the likelihood of other traders desiring to use MOUNT HILL in connection with grape-based wines was remote, as the area is hundreds of kilometres from recognised wine regions in Western Australia, and there was no evidence to suggest that wine could reasonably be produced there in the future. Consequently, the delegate concluded that the trade mark is inherently adapted to distinguish the applicant's goods.

Accordingly, the delegate was satisfied that there were no grounds for rejecting the application under section 41 of the Act. The application for the trade mark MOUNT HILL was therefore accepted for registration.

Orders