Australian designation of the below International Registration was opposed by Cars on Demand IP pursuant to sections 43, 44 and 58 of the Act.
The trade mark covered transport services and vehicle rental and leasing in Class 39. The applicant is a UK company that has been in operation since around 2003 and used its trade mark, in the UK, since around 2007.
The opponent is the owner of two prior Australian trade mark registrations. One for the plain word make CARS ON DEMAND covering ‘event management services’ in Classes 35 and 41, the other the below stylised version covering the same vehicle rental and leasing services as the applied for mark in Class 39 (amongst others).
On Section 43, the Hearing Officer noted that it is not a connotation raised when a trade mark is compared to another, as pleaded by the opponent. Rather, the connotation must exist within the trade mark itself. No such connotation existed and this ground failed.
On section 44, the Hearing Officer noted that the services covered under the opponent’s plain word trade mark were not similar to those covered under the applied for mark. As such, the plain word mark would be of no benefit to the opponent under section 44. However, the opponent’s stylised mark did cover similar services.
Consideration was then given to whether the opponent’s stylised trade mark and the applied for mark were deceptively similar (the opponent did not allege substantial identity). This consideration focused on the descriptive elements of the common element ‘CARS ON DEMAND’. The Hearing Officer came to the view that the overall stylisation of each mark made them distinct from one another – the Hearing Officer was not prepared to convey a monopoly on the term ‘CARS ON DEMAND’.
Finally, section 58 also failed as the opponent was not able to show any earlier use of a substantially identical trade mark.
The designation is to proceed to registration.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s monthly summary of Australian Trade Mark Office decisions. You can view the entire month’s summary here.
Principal / Solicitor / Trade Mark Attorney
Litigation Team, Trade Marks Team
Associate / Trade Mark Attorney
Trade Marks Team