Amongst the areas that the Intellectual Property Laws Amendment (Raising the Bar) Act 2012 intended to address was an issue that arose from the wording of section 41 of the Trade Marks Act 1995 as originally drafted. This issue was brought to light in the decision of Branson J in Blount Inc v Registrar of Trade Marks.
Branson J found that if the Registrar considered that a mark was not inherently capable of distinguishing, or was not sufficiently inherently capable of distinguishing, the wording of section 41 then shifted the onus to the trade mark applicant to show that the mark did or would distinguish the designated goods or services as being those of the applicant. This was contrary to the intention of Parliament, which had tried to establish a “presumption of registrability” with section 33 of the Act; that is, all marks must be registered, unless the Registrar is satisfied that there are grounds for rejection.
To address this, the RTB Act amended section 41, which now provides that a mark is only taken not to be capable of distinguishing the designated goods or services from the goods or services of other persons if either subsection (3) or (4) applies to the trade mark.
Subsection (3) relates to trade marks not to any extent inherently adapted to distinguish and which the applicant has not used before the filing date to such an extent that it does in fact distinguish. Subsection (4) relates to marks that are to some extent, but not sufficiently, inherently adapted to distinguish and the trade mark does not and will not distinguish having regard to the combined effect of (i) the extent to which it is inherently adapted to distinguish; (ii) the use or intended use of the mark by the applicant; and (iii) any other circumstances.
The difficulty with the new wording has been that, at the time a trade mark is first being considered by an Examiner, no evidence of use or intended use by the applicant, or of other circumstances, is before the Examiner. Consequently, the Examiner can only assess the mark on its inherent adaption to distinguish, or lack thereof.
Having had an objection raised under subsection 41(3) or (4), the applicant may provide evidence of use or other circumstances. The Examiner, having already decided against registrability on the basis of low inherent adaption to distinguish, then typically considers whether the evidence “lifts” the unregistrable mark into the registrable category.
This has meant that the onus is still effectively on the applicant to satisfy the Registrar, not on the Registrar to find that the effect of low inherent capability of distinguishing of the mark combined with the level of use or other circumstances are such that the mark is not capable of distinguishing.
For some time, this attitude has been reflected in the wording of decisions from the Hearings branch of the Office:
“the holder’s submissions have not persuaded me that this shape is sufficient of itself to distinguish the holder’s goods from those of others” Henkel AG & Co. KGaA  ATMO 13
“when I weigh the evidence together with the very low inherent capacity of the Trade Mark to distinguish much of the Specification, I find that the combined influence is not enough to support a finding that the Trade Mark is adapted to distinguish” LOCALFITNESS IP Pty Ltd  ATMO 23
“the evidence before me is insufficient to satisfy me that either of the Trade Marks has achieved distinctiveness in respect of any of the Goods at the relevant dates” Red.com, LLC  ATMO 224 (20 December 2022)
If the relevant tests are applied, a decision to refuse a mark under section 41 should be the opposite of the wording in the acceptance below:
“Taking into account the inherent distinctiveness, the use and intended use of the Trade Mark, I am satisfied that the Trade Mark will distinguish the Goods.” Pole Logics Pty Ltd  ATMO 202 (14 November 2022).
However the opposite does not mean that the Registrar is not satisfied; rather, the Registrar must be positively satisfied, on the balance of probabilities and considering a mark’s inherent distinctiveness, use and intended use, and other circumstances, as appropriate, that a mark does not/will not distinguish.
Happily, a review of decisions made in the last twelve months indicates that the language of decisions is now more likely to read:
“Given the Trade Marks’ limited capacity to distinguish, combined with a lack of evidence of use or intended or any other circumstances indicating that they will distinguish the Services, I am satisfied on the balance of probabilities that the Trade Marks do not and will not be capable of distinguishing the Services from those of others (s 41(4)) except for ‘franchising, namely, consultation and assistance in business management, organization and promotion’.” The Custom Chef Pty Ltd  ATMO 182 (13 October 2022)
It has taken ten years, and there might still be some little way to go in fully shifting the section 41 onus from the applicant, but it appears that we may finally be getting there.