United States Golf Association

This matter concerned an application for the registration of the trade mark "HANDICAP INDEX" (International Registration number 1474655) designating Australia, filed by the United States Golf Association (the Holder). The application was opposed by the Registrar of Trade Marks. The hearing officer, Timothy Brown, was required to determine whether to accept the application for registration.

The central legal issue before the hearing officer was whether the trade mark "HANDICAP INDEX" was a descriptive term that had become generic, thereby disentitling it to registration. Specifically, the Registrar contended that the term was a generic description of a golfer's handicap and was not capable of distinguishing the Holder's services. The Holder, conversely, argued that the term was used to denote its specific handicapping system and services.

The hearing officer considered evidence from various individuals within the golfing industry, including the Holder's managing director, a representative from Golf Australia, and a general manager of a golf club. The evidence indicated that the Holder had used "HANDICAP INDEX" since 1987 to denote a standardised calculation of a golfer's ability, which differed from other handicapping systems. Witnesses stated that Australian golfers would understand the term as referring to the Holder's specific system and that it was used exclusively for the Holder's services. Despite this evidence, the hearing officer found that there was a ground for rejecting the application under section 41 of the Act.

Consequently, the hearing officer refused to extend protection to the International Registration Designating Australia number 2020821, applying regulation 17A.24 of the Regulations.