An exparte hearing to determine an application for the mark 5SOS (an abbreviation for the group, Five Seconds of Summer) in classes 9, 16, 25 & 41 by One Mode Productions.
During examination of the application, four prior registrations that included the mark SOS and similar goods were raised as citations. To overcome the citations, One Mode Productions amended the class 16 goods and removed one citation. Their attorneys also filed a Declaration.
Significant discussion centered upon the pronunciation of the mark and the significance of the distress call “Save Our Souls” and its common abbreviation, S.O.S. The Hearing Officer stated that only those familiar with the group would refer to it as “five soss”. Compared to the significance of the letters INXS in relation to music groups, and because of the reputation it had acquired overtime, everyone knows you pronounce INXS as “in excess” not “inks”. However, this is not the approach taken by the court in the Henschke case.
The Hearing Officer concluded that (a) use of the distress call, and (b) concurrent use of the mark 5SOS and the cited trade marks is likely to result in a “species of confusion”.
The application can be accepted if One Mode Productions deletes classes 25 & 41 in their entirety.
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