Combined Communications (CC) opposed the registration of the Combined Communication Solutions (CCS) trade marks; COMBINED COMMUNICATION SOLUTIONS and the COMBINED COMMUNICATION SOLUTIONS Logo.
The opponent, CC, asserted that it was the owner of a prior registration COMBINED COMMUNICATIONS Logo (section 44), it was the first user of the trade mark COMBINED COMMUNICATIONS (sections 58 and 58A), and it has a reputation in its COMBINED COMMUNICATIONS trade mark such that the use and registration of the applied for marks would likely lead to deception or confusion (section 60).
On section 44, the Hearing Officer noted the descriptive nature of the words within the respective trade marks and that he must consider the issue of deceptive similarity in that context. The Hearing Officer concluded that the plain word trade mark COMBINED COMMUNICATION SOLUTIONS was deceptively similar to the opponent’s prior mark, however, because of the distinct nature of the devices comprising the logo versions, the applicant’s logo trade mark was not deceptively similar to the opponent’s prior mark.
The opponent was not able to establish that its prior trade mark is substantially identical to either of the applied for marks. Section 58 could not, therefore, be established.
Lastly, the Hearing Officer noted that the opponent had not satisfied the required threshold of reputation needed for section 60 and this ground failed.
The word application is refused, but the logo version 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.