A central tenet of trade mark registrability in many jurisdictions is that a sign that describes the claimed goods or services should not be eligible for protection. An example of such a sign is the mark SOAP for soap.

The legislative scheme to assess trade mark descriptiveness in Australia is set out under section 41 of the Trade Marks Act 1995. An application for registration of a trade mark must be rejected if the mark is not capable of distinguishing the applicant’s goods or services from the goods or services of other persons. The capacity to distinguish is on a scale. At one end, the trade mark has no inherent adaptation to distinguish the goods or services (SOAP for soap) or may to some extent, but not sufficiently, inherently adapted to distinguish.

The High Court of Australia in Cantarella Bros Pty Limited v Modena Trading Pty Limited ([2014] HCA 48) created the following test to determine registrability under s41 of the Act:

“As shown by the authorities in this Court, the consideration of the “ordinary signification” of any word or words (English or foreign) which constitute a trade mark is crucial, whether (as here) a trade mark consisting of such a word or words is alleged not to be registrable because it is not an invented word and it has “direct” reference to the character and quality of goods, or because it is a laudatory epithet or a geographical name, or because it is a surname, or because it has lost its distinctiveness, or because it never had the requisite distinctiveness to start with. Once the “ordinary signification” of a word, English or foreign, is established an enquiry can then be made into whether other traders might legitimately need to use the word in respect of their goods.”

In summary:

• Step 1 is to establish the ordinary signification of the sign in Australia to those concerned with the relevant goods or services.
• Step 2 is to gauge whether other traders might be likely to desire to use the sign in respect of their own goods or services for the ordinary signification established in the first stage of the enquiry.

As trade mark attorneys, we see application of the above two step Cantarella test by Examiners on a frequent basis. Indeed, it can be challenging to change an Examiner’s assessment by argument alone if the Examiner has issued a descriptiveness objection under s41. The decision in Upcodes Inc [2025] ATMO 225 provides useful guidance on sensible application of the Cantarella test.

The trade mark under consideration is UPCODES in relation to providing non-downloadable software for assisting users with research on building codes, code compliance, and information relating to the design, construction, or occupancy of buildings in class 42.

During examination, the examiner asserted that letters UP were a well-known acronym for urban planning, and as such UPCODES, as a whole, signified that the claimed services related to urban planning codes. In the examiner’s view, in light of this descriptive meaning, other traders would have a legitimate desire to use UPCODES, or a sign so nearly resembling it, in relation to the claimed services. As such, the mark was not capable of distinguishing the claimed services from those of other traders.

The trade mark owner filed arguments in response that the mark was an invented word with no ordinary signification. The owner also argued that if a consumer did identify the mark as two conjoined words, “UP” has many meanings and therefore, a customer would not immediately know or recognise the claimed services – and as such, the mark is only suggestive of the claimed services.

The examiner rejected these arguments and maintained their objection – indeed, the examiner doubled down by providing links to online resources in support of the examiner’s meaning of the letters UP.

In light of the impasse, the owner requested to be heard by a Hearing Officer. By doing so, the matter is considered afresh by an experienced trade mark examiner, with the Hearing Officer not being bound by the examiner’s rationale or conclusion.

As a first step in their assessment, the Hearing Officer rejected the owner’s argument that the mark is an invented word since claimed services use the words “‘codes’ and ‘code’ in a context where their normal meaning in English as ‘rules or regulations’ is self-evident” and as such, a consumer would recognise the mark as a conjunction of UP and CODES in respect of the claimed services

Dispensing with the invented word argument, the next issue was whether UP in the mark would “signify ‘urban planning’, such that a consumer would understand the Trade Mark, as a whole, to signify that the Designated Services relate to ‘urban planning codes’, meaning the rules and regulations relevant to urban planning.”

Although the Hearing Officer was not bound to interrogate the Examiner’s rationale for their opinion on the ordinary signification of UP, they did so in quite a bit of detail. The Examiner relied upon the free online database of ‘Acronym Finder’ to hold that the letters UP signify ‘urban planning’. The Hearing Officer pointed out that this database “may contain an entry which illustrates an ordinary signification somewhere in the world and in some context. However, the mere existence of an entry on this database does not automatically mean a sign has an ordinary signification in Australia, in the context of a given good or service.” The Hearing Officer drilled into the Acronym Finder entry for UP to find that six entries exist for UP (urban planning) to support the definition provided in the entry. All six entries were outside Australia and none of the examples were considered relevant to the Australian market. That is “…the Acronym Finder entry does not support that UP is generally understood as being an acronym for ‘urban planning’, or would be perceived as such, in the Australian market.”

The Hearing Officer turned to the other supporting evidence cited by the examiner in the form of links to various websites, namely:

• A NSW council website showing that ‘UP’ appearing to abbreviate the words ‘Urban Planning Committee’ in its entirety. The Hearing Officer considered ‘UP’ in this context to be an arbitrary internal name and not an ordinary signification.
• Links to two North American universities, which were not considered Australian resources, not directed to Australians, nor necessarily in relation to the claimed services. Moreover, use of an abbreviated course name at an overseas university does not automatically demonstrate an ordinary signification generally, or in the Australian market.
• Two links which discuss urban planning with reference to the letters UP. Upon close analysis, the Hearing Officer found that UP was used as an abbreviation for the Indian state of Uttar Pradesh and was not used to abbreviate or signify urban planning.

Based on this assessment, the Hearing Officer held that UP did not signify urban planning with reference to the claimed services in Australia and the mark UPCODES, as a whole, does not have an ordinary signification. The analysis failed Step 1 of the Cantarella test and thus consideration of step 2 was not necessary. The Hearing Officer considered the trade mark eligible for protection, in contrast to the examiner.

Successfully challenging an examiner’s intransigent stance on descriptiveness can be costly, time-consuming and frustrating, despite presentation of cogent and persuasive arguments by the trade mark owner. This is particularly the case when examiners cite irrelevant evidence from the darkest annals of the internet. This decision highlights the importance of challenging an examiner’s objections, particularly in the absence of evidence that is relevant to the Australian market.