102. The representative of Australia said she was grateful to the delegation of the European Union for its explanations, but she would also be interested in the full system in that region. She was unsure as to the status of EU Regulation 2081/92, in particular its Article 3, which contained a requirement for the establishment of a register for generic terms and she would welcome any more information about whether or not that was still an obligation and how it operated.
103. Regarding part a of the second sub-question, i.e. the issue of genericness during the application process for the protection of a term, she said that examiners had to consider whether a trademark term was capable of distinguishing a particular good or service in the market place and whether the term was descriptive. They had to ascertain how the term might ordinarily be used or understood in the market place. Therefore, research might include dictionary references, industry information used by multiple traders or from multiple geographic sources to ascertain whether or not a term was descriptive in the market place, information about geographic significance and also links to other entries in the Australian trademarks register. The decision of a trademark examiner was an administrative decision. An adverse decision could be challenged by the applicant through a hearing process A hearing decision could be appealed to a prescribed court. In those proceedings a term for which protection was applied could be found to be descriptive of an article.
104. Turning to part b of the second sub-question, i.e. the issue of genericness in the context of the challenge of a protected term, she said that in Australia this would be a judicial process. A court could make a definitive finding of genericness, normally as a result of a cancellation action. An agreed person on the register might make an application to a prescribed court to amend or cancel a registered trademark if it became generally accepted within the relevant trade as a sign or term that described, or was the name of, an article, substance or service. The prescribed court might determine the day on which a sign first became generally accepted within the relevant trade as a sign that described or was the name of a certain article, substance or service. The burden of proof, as she had stated previously, was for the challenging party to prove a term was generic, as initially there would be a presumption of validity in favour of the registered trademark in her country.
