Trade mark application number 2543951 (classes 9 and 41) – - [2025] ATMO 195

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Trade mark application number 2543951 (classes 9 and 41) – MORE PLACES (fancy) – in the name of Sportsbet Pty Ltd.

Delegate:

Debrett Lyons

Representation:

Applicant: Clayton Utz

Decision:

2025 ATMO 195

Trade Marks Act 1995 (Cth) – s 33 proceedings – ground for rejection under s 41 – trade mark sufficiently inherently adapted to distinguish – trade mark application accepted for registration.

Background

This is a decision pursuant to s 33 of the Trade Marks Act 1995 (Cth)[1] which provides that the Registrar of Trade Marks must, after examination, accept an application to register a trade mark unless satisfied that, amongst other matters, there are grounds for rejecting it.
[1] In this decision, all references to sections are references to sections of the Trade Marks Act 1995 (Cth).
On 26 November 2024, Sportsbet Pty Ltd (‘Applicant’) filed an application in classes 9 and 41 to register the trade mark shown below.
(‘Trade Mark’)
The application was examined and grounds for rejection under ss 41 and 44 were raised. The Applicant responded, requesting amendment of the original class 9 goods specification to that shown below which overcame the s 44 ground for rejection. However, the s 41 ground for rejection was maintained against all the goods and services.
Class 9: Computer software, computer programs, and downloadable software applications [apps] relating to interactive entertainment, sporting, racing, betting, wagering, gambling, and tipping products; software platforms; software relating to online transmission and viewing of sports, racing, amusement, entertainment and games information and events; software and computer programs used for special features relating to betting, odds, improving customer experiences, and the storage and processing of information and data; digital content; digital media, namely, pre-recorded DVDs, digital media devices, and downloadable audio and video files, featuring multimedia entertainment, amusement, sporting, racing, betting, and tipping content; software for the integration of artificial intelligence (AI) and machine learning for marketing and sales channel management; electric and electronic apparatus for online transmission and viewing of sports, racing, amusement, entertainment and games information and events in the form of betting and wagering apparatus, devices and machines; databases; electronic publications
(‘Goods’)
Class 41: Entertainment services; amusement and recreation services; sporting and racing services; betting and wagering services; gambling services; gaming services; providing information, including online, about education, training, entertainment, sporting and cultural activities; provision of recreation, amusement, and entertainment information including information on sports and games, betting, racing events, contingencies and odds; sporting events; education services relating to responsible betting and gambling; sports wagering services and approved betting competitions; producing entertainment, sports, racing, betting, and tipping content including videos, podcasts, images, full length shows, cut down videos of shows for use on other platforms, and other information for publication on various forms of media including apps, websites, social media accounts, streaming services, linear and broadcast video on demand, subscription video on demand, print and online publications, electronic…

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 195
Decision Date: 16 September 2025

CaseChat Overview and Summary

This decision concerns an application for trade mark registration number 2543951 in classes 9 and 41, brought by an applicant seeking to register the mark MORE PLACES. The application was opposed, and the matter came before a Hearing Officer.

The central legal issue was whether the proposed trade mark MORE PLACES was registrable under section 41 of the relevant legislation, specifically whether it was adapted to distinguish the applicant's goods and services or if it was a descriptive term that other traders might legitimately wish to use.

The Hearing Officer reasoned that the phrase MORE PLACES did not describe the goods and services in a specific way, but rather in a broad manner lacking specificity. Applying the principles established by the High Court, which emphasize the common right of the public to use language without fear of infringement, the Hearing Officer found that there was ample scope for honest and fair use of the words MORE PLACES by other traders without impinging on the applicant's rights. The Hearing Officer noted the absence of evidence suggesting other traders wished to use the phrase to describe similar goods and services.

Consequently, the Hearing Officer determined that the trade mark was registrable for the specified goods and services and that there was no proper ground for rejection under section 41.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

There is no evidence that other traders wish to use the words MORE PLACES to describe the Goods and Services. Note 1 to s 41 describes trade marks which are not adapted to distinguish goods or services as those that are ordinarily used to indicate “the kind, quality, quantity, intended purpose, value, geographical origin, or some other characteristic, of goods or services.” The phrase MORE PLACES does not describe the Goods and Services or their characteristics in anything more than a broad way altogether lacking specificity. As the High Court underscored, the test refers to the legitimate desire of other traders to use a word which is directly descriptive in respect of the same or similar goods or services. Furthermore, the test expounded by the High Court relies on Clark Equipment Co v Registrar of Trade Marks[7] where it should be remembered that what is protected is the common right of the public to use language without fear of infringement. My assessment is that there is ample scope for honest, fair use of the descriptive words MORE PLACES without danger of impinging on the rights given to the Applicant by registration.[7] [1964] HCA 55, [5] (Kitto J).Decision I consider that the Trade Mark is registrable for the Goods and Services and that there is no proper ground for rejection under s 41.Debrett LyonsHearing OfficerOppositions and HearingsTrade Marks and Designs16 September 2025

Ratio Decidendi

Legal Principle Established

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