AEG Ogden applied to register its ‘ICC Sydney’ trade mark (the trade mark relates to The International Convention Centre in Sydney that opened in December 2016), but its application was blocked by two prior trade mark registrations; Nos. 888807 ICC INTERNATIONAL COURT OF ARBITRATION and 1234147 ICC Logo. Having been unable to overcome these two prior marks, AEG Ogden applied to be heard on the matter.
The hearing officer first considered the similarity of the services covered by the respective trade marks, which were found to be ‘of the same description’. Next, the hearing officer considered the similarity of the respective trade marks and found that the common ‘ICC’ element on all three resulted in the trade marks being deceptively similar. It was, therefore, found that the objection based on the two prior marks was correctly raised and maintained.
To attempt to overcome the objection, AEG Ogden filed evidence of its use of the ‘ICC Sydney’ trade mark. The hearing officer noted that whilst the evidence describes the marketing and promotional efforts of AEG Ogden, the services covered under the application related only to the provision of conference facilities. As the conference facility only opened some seven weeks prior to the hearing, it was not possible for AEG Ogden to have claimed honest concurrent use in relation to the services covered under the application.
The application 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