The Presumption of Registrability

Paper Summary:

This paper explains that one of the main changes introduced by the new Trade Marks Act is the "presumption of registrability" prescribed by s 33, which prescribes that an application for registration must be accepted unless the Registrar is satisfied that there are grounds for rejecting it. Thereby, the onus is no longer on the applicant to establish registrability but instead is shifted to the Registrar. The author reviews various cases and discovers an inconsistency in the court's interpretation and application of s 33 insofar as examination practice is concerned. The paper concludes that case law appears to be slightly more inclined to an interpretation that a trade mark will be registered unless there is some specific objection to it.

Table of Contents:
Historical Framework
Examination Today
Section 41
Interpretations by the Courts
Conclusion

From the Paper:

"In 'Kenman Kandy v Registrar of Trade Marks' (2002) 56 IPR 30, the millennium bug shape was rejected for being not inherently adapted to distinguish. On appeal to the federal court, however, it was explicitly stated that the impact upon the access of other traders to the use of insect like shapes as trade marks is speculative. That is, the likelihood that other traders in the course of their businesses, and without improper motives, would desire to use a shape such as the millennium bug, and in other words, the bug's inherent adaptability to distinguish, is speculative."

Sample of Sources Used:

• Working Party To Review The Trade Marks Legislation Recommended Changes to the Australian Trade Marks Legislation: A report to the Hon. Ross Free MP Minister for Science and Technology July 1992
• Second Reading Speech, House of Representatives Debates, 27 September 1995, pp1909-11
• Lahore J., Patents, Trade Marks & Related Rights 1996
• Re Application by Henry Quennell Ltd (1955) 72 RPC 36 (Pussikin)
• French J, Kenman Kandy Australia Pty Ltd v Registrar of Trade Marks (2002) 56 IPR 30 at 37

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