Case Notes, Deceptively similar?, s 44 TMA


AEG Ogden Pty Ltd [2017] ATMO 9 (6 February 2017)

Applicant sought registration of the mark ICC Sydney in classes 35, 41 and 43.

Ground of rejection were raised under ss 39, 42 and 44 of the TMA.  By the time of the hearing only the s 44 ground remained in contention.

The cited registrations were the mark ICC INTERNATIONAL COURT OF ARBITRATION and the mark depicted below, both registered for a wide range of goods and services.


Section 44

The HO considered that the compared marks all contained a common element – the letters “ICC” – which is inherently adapted to distinguish and, in each case, the additional elements did not provide any source of distinguishing value.  He concluded therefore that “a member of the public knowing none of the trade marks is likely to be confused by the trade marks simply because of the commonality of the letters “ICC”” and the applied-for mark was deceptively similar to the cited marks.

Evidence of use insufficient to support registration under s 44(3) (honest concurrent use).

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