18 July 2010

Tennis Warehouse not Distinctive

The Case: Sports Warehouse, Inc. v Fry Consulting Pty Ltd [2010] FCA 664

The Venue: The Federal Court of Australia

Judge: Kenny J

Comment

The Trade Marks Act allows the registration of trade marks with low levels of distinctiveness where sufficient use is shown by the applicant and where that is as a trade mark in the course of trade.  But as Sports Warehouse discovered, there are cases where the trade mark is so descriptive that the Registrar and the Court will set strict requirements for the level and type of use required to achieve registration. The applicant will need to establish accurately that use is "as a trade mark" and that it was such that the mark was capable of distinguishing as at the lodgement date.

This case is instructive in that it provides guidelines for how a Registrar should treat evidence of use when an applicant is attempting to obtain registration relying on extensive use of a trade mark.