Trade Mark to Reflect Actual Use for Registration

In an appeal decision by the Federal Court of Australia, the court allowed the appeal of Tricarico against Dunn Bay Holdings in the case of Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271. The issue involved a dispute over the registered trade mark name ‘MALTMARKET BAR & KITCHEN”.

It was argued that the way the logo was presented substantially affected the identity of the trademark. The specific logo in dispute involved the word ‘MARKET’ being placed vertically in small white font within the stem of the letter ‘L’ in ‘MALT’. The Federal Court agreed in this respect. It held that the word ‘market’ was integral to ‘MALTMARKET’ and thus obscuring the word ‘MARKET’ in actual use to the point of difficulty in detection substantially affects the MaltMarket trade mark’s identity.

The court thus held that where there is no allegation of improper conduct, the MaltMarket application was incorrectly filed because it did not reflect actual use or intended use and therefore, should not be registered.

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