Possible new strategy for having a trade mark application accepted for registration

18 December 2018

The recent Federal Court decision Red Energy Pty Limited v Registrar of Trade Marks [2018] FCA 1149 gives hope to applicants in Australia whose trade mark applications have been refused.


Energy retailer Red Energy filed an Australian Trade Mark Application for the word ‘EVENPAY’. It claimed a broad range of goods and services in respect of electrical, financial and energy products and related services.

During examination, the examiner raised objection against the Application on the basis that ‘EVENPAY’ ordinarily describes a bill payment method where equal instalments are spread over time and was therefore something that other traders would likely need to use in relation to their own goods and services. In response to this, the applicant filed both evidence of use of the filed mark, and submissions arguing against the rejection. The applicant’s response was not accepted by the examiner at IP Australia and as a result, the applicant requested a hearing before the Registrar’s delegate.

In upholding the objection raised by the examiner, the delegate of the Registrar of Trade Marks rejected the Application in its entirety and determined that ‘EVENPAY’ was not, to any extent, inherently adapted to distinguish Red Energy’s goods or services from those of other persons, pursuant to s 41(3) of the Trade Marks Act 1995 (Cth) (the Act). The Registrar’s delegate relied upon evidence put forward by four other Australian utility providers, and was not satisfied by the Applicant’s evidence of use which was limited to Victoria.

Red Energy appealed the delegate’s decision upholding the initial rejection of the application to the Federal Court of Australia. Unusually, on appeal the Registrar of Trade Marks advanced no opposing submissions or evidence to counteract Red Energy’s position.


Beach J allowed Red Energy’s appeal, ordering that the initial decision of the Registrar of Trade Marks by her delegate be set aside and that Trade Mark Application No. 1746950 be accepted.

Beach J relied on Registrar of Trade Marks v Woolworths (1999) 93 FCR 365 in finding that no presumption of correctness extended to the Registrar’s initial decision. It followed that the Application must be accepted unless the Court is satisfied that it had not been made in accordance with the Act or that there were grounds for rejecting it. If the matter was left in doubt, then the Application should be accepted.

His Honour went on to consider the presumption of registrability provided for in s 33(1) of the Act, which extends to s 41. After noting that the appeal was by way of a complete re-hearing, and that the Registrar did not seek to assert that the Application had not been made in accordance with the Act or that there was any ground under the Act for rejecting it, Beach J found that the presumption of registrability applied and as a result, allowed the appeal. This was because, on the material before him, he was not able to say that Red Energy’s ‘EVENPAY’ trade mark was not inherently adapted to distinguish each of the relevant designated goods and services.

In adopting Red Energy’s submissions, His Honour added that:

  • ‘EVENPAY’ appears to be an invented word;
  • ‘EVENPAY’ appears not to have a meaning in the context of these services that a consumer would immediately perceive;
  • ‘EVEN’ seems to have multiple meanings, adding to the ambiguity and richness of meaning from a consumer standpoint; and
  • The apparent lack of any ordinary signification or meaning is reinforced by the removal of the space between ‘EVEN’ and ‘PAY’.

Even if the ordinary signification of ‘EVENPAY’ was found to directly describe any of the designated goods or services, it was noted that:

  • The meaning of ‘EVENPAY’ is not immediately apparent;
  • Any descriptiveness of any goods or services is oblique;
  • There is no evidence of third-party descriptive use of ‘EVENPAY’, or evidence of the needs of other traders. In any case such evidence would be best considered in an opposition or removal proceeding; and
  • Other traders have a universe of alternative marks to choose from.

The Registrar’s decision to not participate on appeal suggests either that the Registrar no longer felt the mark ‘EVENPAY’ was completely devoid of inherent distinctiveness, or that the Registrar did not expect the Court to revise its decision regarding the trade mark.

On appeal, it was open to the Registrar to argue that at a minimum, the Court should raise an objection pursuant to s 41(4) of the Act ie, that the Mark was to some extent inherently adapted to distinguish, at least in relation to certain specific goods and services claimed by the Application. For reasons unknown, the Registrar elected not to put forward any response whatsoever.

The complete lack of involvement in this case may demonstrate an unwillingness by the Registrar to challenge appeals raised in response to Trade Marks Office decisions. Whether it reveals a rare instance of complacency on the Registrar’s part that will not be repeated, or it serves to communicate a deliberate message on the Registrar’s stance on applicant appeals, is unknown. Nonetheless, the decision is encouraging to applicants who initially receive adverse examination reports. The number of appeals is likely to rise as a result.

How can we assist?

Our trade marks team has extensive experience in registering trade marks and overcoming initial objections to trade mark applications. Please contact a member of our experienced team should you require any assistance with registering your brand in Australia or elsewhere.

This article was written by Luke Dale, Partner, Niomi Abeywardena, Special Counsel & Annabel Nettle, Law Clerk.

Luke Dale

P: +61 8 8205 0580

E: lcdale@hwle.com.au

Niomi Abeywardena

P: +61 8 8205 0583

E: nabeywardena@hwle.com.au

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