Citigroup opposed the registration of the trade mark CITISALES & LEASING, which was filed by George Sparsis covering real estate services in Classes 35 and 36.
Initially, the application was accepted for registration without any objection being raised by the Trade Marks Office. Citigroup, however, opposed on the basis of its prior registrations that include the element ‘CITI’, including two prior registrations for ‘CITI’ on its own.
When considering the opponent’s prior registrations, the hearing officer noted that the services covered were at least similar and the trade marks deceptively similar on the basis of the shared ‘CITI’ element, as well as the opponent’s family of ‘CITI’ formative trade marks. Overall, the hearing officer was clear in his view that “it is likely that most people would be immediately caused to wonder if there is some connection” between the trade marks.
In an attempt to overcome the prior registrations, the applicant filed evidence of use of its trade mark. However, the hearing officer noted that the evidence was of a trade name and not a trade mark, that the trade mark evidenced was not the same as the trade mark applied for by the applicant (noting that there was a “total impression of dissimilarity” between the two), and that there were significant gaps in the time period of use provided. All of these factors led to the conclusion that the applicant had not made prior continuous, or honest concurrent, use of its trade mark.
The application for registration was refused.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.
Trade Marks Team