Red Energy Pty Ltd v Registrar of Trade Marks

[2018] FCA 1449

Trade marks – appeal from decision of Registrar to reject application on ground of lack of distinctiveness

Red Energy Pty Ltd, an energy retailer in the National Electricity Market, applied for registration of the trade mark EVENPAY.

The delegate of the Registrar rejected the application on the ground that it is “not to any extent inherently adapted to distinguish”: Trade Marks Act 1995 (Cth), s 41(3). Red Energy appealed.

The Registrar did not contest the appeal and, as Beach J noted (at [2]), there is no presumption in favour of the correctness of the Registrar’s decision; the application must be accepted unless the Court is satisfied that it has not been made in accordance with the Act: Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 365, [33] (French J).  So perhaps this was not the most troubling matter to come across Beach J’s desk.

His Honour accepted the submissions of Mr Craig Smith, counsel for Red Energy, that:

  • The word does not appear to directly describe or indicate the kind of goods and services covered by the application
  • The word is formed from a combination of two words in a syntactically unusual way
  • The word appears to be evocative rather than descriptive

His Honour made some further observations, including:

  • EVENPAY appears to be an invented word
  • It does not have a meaning in the context of the particular services that a consumer would immediately perceive
  • EVEN has multiple meanings , adding to the “ambiguity and richness of meaning from a consumer standpoint” – divisible by two, level, smooth or balanced or used as an adverb, giving emphasis to an action
  • The lack of any ordinary signification is reinforced by the removal of the space between EVEN and PAY
  • Other traders have a “universe of alternative marks to choose from”

This post was initially posted by The Hon Peter Heerey AM QC, Tom Cordiner KC and Alan Nash on IPForum.


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