Case Notes, Deceptively similar?, Honest concurrent use, s 44 TMA

CITISALES & LEASING deceptively similar to CITI, CITILOAN

Citigroup Inc v George Sparsis [2017] ATMO 14 (22 February 2017)

Registration was sought for the mark CITISALES & LEASING in relation to various real estate services.

Opposed pursuant to s 44 in reliance on registered marks including CITILOAN, Citimortgage, CITI all registered in relation to financial services or real estate affairs.

Hearing officer considered that the applied-for mark was “coined in the same way as the Opponent’s CITI-[Extension] trade marks and is used or proposed to be used in relation to similar services as those in respect of which the Opponent’s CITI solus trade marks are registered” and that “most people would be immediately caused to wonder if there is some connection between the trade provenance of the similar services offered by both the Applicant under the Trade Mark and the Opponent under its CITI solus and CITI-[Extension] trade marks“.

Evidence did not support prior use (s 44(4) TMA) or honest concurrent use (s 44(3) TMA).

The s 44 ground therefore succeeded.

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