Opposition by On Clouds GmbH to registration of trade mark application number 2368466 (classes 25 and 40) -

[2025] ATMO 91

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by On Clouds GmbH to registration of trade mark application number 2368466 (classes 25 and 40) - CYCLONIC - in the name of Cyclonic, Inc

Delegate:

Anne Makrigiorgos

Representation:

Opponent: Norton Rose Fulbright Australia

Applicant: Corrs Chambers Westgarth

Decision:

2025 ATMO 91

Trade Marks Act 1995 (Cth) – opposition under section 52 – ground of opposition under reg 4.15/s 44 - ground not established– trade mark to proceed to registration

Background

1. This decision concerns an opposition under s 52 of the Trade Marks Act 1995 (Cth)[1] by On Clouds GmbH (‘Opponent’) to registration of the following trade mark:

[1] Unless otherwise stated, each reference to a section is a reference to a section of the Trade Marks Act 1995 (Cth) and each reference to a regulation is a reference to a regulation in the Trade Marks Regulations 1995 (Cth).

Trade mark number

2368466 (‘Application’)

Trade mark

CYCLONIC (‘Trade Mark’)

Applicant

Cyclonic, Inc (‘Applicant’)

Filing Date

30 June 2023 (‘Relevant Date’)

Specification

Class 25: Clothing; bottoms as clothing; tops as clothing; footwear; headwear; hosiery; sleepwear; neckwear; waist belts; swimwear; underwear; foundation garments; fashion face masks in the nature of balaclavas; knit face masks (balaclavas); cloth face mask being headwear ; jackets; sweatshirts; sweaters; vests; coats; blazers; suits; pants; jeans; shorts; shirts; dresses; skirts; scarves; shawls; socks; stockings; suspenders; gloves; bathrobes; sleeping masks; wristbands as clothing; sweatbands; headbands; head wraps; bandanas; caps being headwear; hats; visors being headwear

Class 40: recycling services; recycling reclamation of textiles, textile waste, clothing; providing information relating to recycling reclamation of textiles, textile waste, clothing; recycling of clothing; recycling of textiles; recycling of textile waste; treatment processing of textiles, textile waste, clothing; sorting of waste recyclable materials; Custom manufacture of cotton yarn, thread, and fabric; Recycling of cotton fibers (‘Applicant’s Goods and Services’)

2.     The Trade Mark was examined and advertised as accepted for possible registration on 1 December 2023.

3.     On 31 January 2024, the Opponent filed a Notice of Intention to Oppose the Application. On 23 February 2024, the Opponent filed a Statement of Grounds and Particulars (‘SGP’). The Applicant filed a Notice of Intention to Defend the opposition on 3 April 2024.

4.     The Opponent filed Evidence in Support (‘EIS’) on 10 May 2024. The Applicant did not file Evidence in Answer.

5.     The parties were given the opportunity to either request an oral hearing or to file written submissions. The Opponent elected to be heard by written submissions and filed written submissions prepared by Jackie O’Brien of Norton Rose Fulbright Australia. The Applicant did not ask to be heard and did not file any submissions. I am a delegate of the Registrar of Trade Marks and this matter has been allocated to me to determine. I make my decision based on the particulars set out in the SGP, the EIS and the written submissions of the Opponent.

Grounds and onus

6.     The SGP nominates a single reg 4.15A/s 44[2] ground of opposition based on the Opponent’s International Registration designating Australia under number 2120657 (International Registration number 1550068), details of which appear below:

[2] As the Opponent relies on an International Registration as the basis of this ground of opposition, the technical ground of opposition is under reg 4.15A. However, as the terms are substantively identical for all relevant purposes, I have retained the reference to s 44 in this decision. References to s 44 as considered in this decision should be taken to read reg 4.15A and the Opponent’s Mark should be recognised as an International Registration

Trade mark	CYCLON (‘Opponent’s Mark’)
Filing Date	20 June 2020
Priority Date	30 January 2020[3]
Specification	Class 25: Clothing; footwear; headwear; outdoor shoes; casual shoes; running shoes; sports shoes; athletic footwear; trekking shoes; trail shoes; trail running shoes; hiking boots; alpine boots; mountaineering boots; climbing shoes; baseball shoes; football boots; tennis shoes; snowboard boots; ski boots; basketball sneakers; bath slippers; sports clothing; leisure wear; moisture-wicking tops and pants; moisture-wicking underwear; breathable tops and pants; breathable underwear; sports bras; t-shirts; sports t-shirts; running shirts; tops; garments; tank-tops; long-sleeved jerseys; sweatshirts; vests; trousers; sports trousers; running trousers; shorts; sports shorts; running shorts; ski pants; jackets; outdoor jackets; sports jackets; sports coats; rain slickers; pelerines; ski jackets; bathing suits; bathing trunks; bikinis; baseball caps; hats; caps; bathing caps; leg warmers; boxer shorts; socks; sports socks; footies; sports singlets; underwear; thermal clothing; thermal underwear; thermal socks; headwear of thermal textile materials; headbands; scarves; gloves; sweat bands; head sweat bands; waist belts; bath robes (‘Opponent’s Goods’)

[3] Convention priority claimed from Swiss trade mark number 742277.

7.     The Opponent carries the burden of establishing the ground of opposition[4] on the balance of probabilities.[5] The date at which the rights of the parties are to be determined is the Relevant Date.[6]

Evidence

[4] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32] (Keane CJ, Stone and Jagot JJ).

[5] Telstra Corporation Limited v Phone Directories Company Pty Ltd [2015] FCAFC 156, [133] (Besanko, Jagot and Edelmann JJ).

[6] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595 (Kitto J) (‘Southern Cross’).

1. The Opponent filed a declaration of Jennifer Louise Wrigley, Special Counsel of the Opponent’s previous legal representatives By George Legal dated 8 May 2024. The declaration merely provided details of the Opponent’s Mark.

   Discussion and reasons

2. Section 44 relevantly provides:

   Identical etc. trade marks

   (1)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of goods (applicant’s goods) must be rejected if:

   (a)the applicant’s trade mark is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar goods or closely related services; or

   (ii)a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

   Note 1:For deceptively similar see section 10.

   Note 2:For similar goods see subsection 14(1).

   Note 3:For priority date see section 12.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

   (2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:

   (a)it is substantially identical with, or deceptively similar to:

   (i)a trade mark registered by another person in respect of similar services or closely related goods; or

   (ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and

   (b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

   Note 1:For deceptively similar see section 10.

   Note 2:For similar services see subsection 14(2).

   Note 3:For priority date see section 12.

   Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.

3. As a starting point, to successfully oppose the Application pursuant to s 44, the Opponent must establish each of the following requirements:

   ·the Opponent’s Mark has a priority date which is earlier than the Relevant Date and is held in a name other than that of the Applicant (‘the first requirement’);

   ·the Trade Mark is substantially identical with or deceptively similar to the Opponent’s Mark (‘the second requirement’); and

   ·the Applicant’s Goods are similar to the Opponent’s Goods or the Applicant’s Services are closely related to the Opponent’s Goods (‘the third requirement’).

4. I am satisfied that the priority date of the Opponent’s Mark is earlier than the Relevant Date and that the Opponent’s Mark is in a name other than the Applicant. Therefore, the first requirement is satisfied.

5. The next consideration is whether the Trade Mark is substantially identical with, or deceptively similar to, the Opponent’s Mark.

6. The starting point of an analysis as to whether trade marks are substantially identical is the well-known dicta of Windeyer J in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’), where his Honour stated:

   In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison.[7]

   [7] [1963] HCA 66, [12] (‘Shell’).

   14.    Thus, if a total impression of similarity emerges from a comparison between the two marks, the marks are ‘substantially identical’.

   15.    In Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd (‘Pham Global’),[8] the Full Court clarified the way in which a ‘side by side comparison’ of trade marks is to be carried out in order to determine whether the two marks are substantially identical. The Full Court identified that the proper approach for determining whether trade marks are substantially identical is an evaluative process which begins with a comparison of the essential elements of the marks, before considering the differences between them. This is explained in Pham Global at [52]:

   [8] [2017] FCAFC 83 (Greenwood, Jagot and Beach JJ).

   The required exercise of side-by-side comparison is not carried out in a factual and legislative vacuum. The purpose of the exercise is to decide if two trade marks are substantially identical, where a trade mark is “a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person” (s 17). Given this context, it is unlikely that the essential elements of a mark or its dominant cognitive clues are to be found in mere descriptive elements, which are not apt to perform this distinguishing role in respect of the relevant goods or services. While this does not mean that differences, including descriptive differences, may be ignored, it does mean that the side-by-side comparison is to be carried out cognisant of the essential elements of the mark.[9]

   [9] Ibid [52]

   16.    Whether there is substantial identity is a question of fact.[10]

   [10] Ibid [53].

7. The Opponent’s submits that the Opponent’s Mark consists solely of the word CYCLON and on a side by side comparison, the word CYCLON is wholly contained within, and forms the first part, and the majority of, the Trade Mark. Given the prominent manner in which the word CYCLON features in both the Opponent’s Mark and the Trade Mark, CYCLON would be perceived as the essential element of both marks by consumers. Further, the only point of difference between the Trade Mark and the Opponent’s Mark are the letters IC and these letters are commonly used as a suffix to indicate some form of connection or nexus, for example ‘having characteristics of’ (e.g. metal / metallic, angel / angelic) or ‘in the style of’ (i.e. Byron / Byronic). The suffix IC enhances, rather than detracts from, the essential nature of the CYCLON element in the Trade Mark.

8. In comparing the Trade Mark and the Opponent’s Mark side by side there is a similarity in the presence of the element CYCLON in both marks. However, while CYCLON is the only element of the Opponent’s Mark and is a word with no meaning, the word CYCLONIC is the only element of the Trade Mark and is a word familiar to the Australian public.[11] Examining the visual similarities and differences between CYCLON and CYCLONIC, it seems to me that there is a clear visual alteration in the Trade Mark due to the terminating letters ‘ic’ and this is of significance, as by doing so, the result is that the Opponent’s Mark is not a visually separate element within the Trade Mark.

   [11] Macquarie Dictionary Online defines a cyclone as ‘an atmospheric pressure system characterised by relatively low pressure at its centre, and by clockwise wind motion in the Southern Hemisphere, anticlockwise in the Northern’ and cyclonic an as adjective.

9. I am not satisfied that a total impression of resemblance emerges from a side by side comparison of the trade marks. Therefore, I do not consider the Trade Mark to be substantially identical with the Opponent’s Mark.

10. I move to consider whether the Trade Mark is deceptively similar to the Opponent’s Mark.

11. Section 10 provides a definition of deceptively similar being that ‘a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion’.

12. Justice Windeyer outlined the following approach for the assessment of deceptive similarity in Shell:

    On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's [mark].[12]

    [12] Shell (n 7), [13].

13. The High Court in Self Care IP Holdings Pty Ltd v Allergan Australia Pty Ltd[13] conveniently stated the relevant principles, which were summarised in The Agency Group Australia Limited v H.A.S. Real Estate Pty Ltd[14] as follows:

    [13] [2023] HCA 8 (Kiefel CJ, Gageler, Gordon, Edelman and Gleeson JJ).

    [14] [2023] FCA 482, [55] (Jackman J).

    (a)the resemblance between the two marks must be the cause of the likely deception or confusion;[15]

    [15] Swancom Pty Ltd v The Jazz Corner Hotel Pty Ltd [2022] FCAFC 157, [69] (Yates, Abraham and Rofe JJ) (‘Swancom’).

    (b)in the trade mark comparison, the marks must be judged as a whole taking into account both their look and their sound;[16]

    [16] Cooper Engineering Co Pty Ltd v Sigmund Pumps Ltd (1952) 86 CLR 536, 538 (Dixon, Williams and Kitto JJ).

    (c)the marks should not be compared side by side;[17]

    (d)the effect of spoken description must be considered; if a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods (or services), then similarities both of sound and of meaning may play an important part;[18]

    (e)the focus is upon the effect or impression produced on the mind of potential customers of the goods (or services) in relation to which the two marks are used and in the case of the registered mark, allowing for ‘imperfect recollection’;[19]

    (f)the notional buyer is a person with no knowledge about any actual use of the registered mark, the actual business of the owner of the registered mark, the goods the owner produces, any acquired distinctiveness from the use of the marks prior to filing, or any reputation associated with the registered mark;[20]

    (g)the correct approach is to compare the impression (allowing for imperfect recollection) that the notional buyer would have of the registered mark (as notionally used on all of the goods or services covered by the registration), with the impression that the notional buyer would have of [the notional and normal fair use of the opposed mark];[21]

    (h)“deceived” implies the creation of an incorrect belief or mental impression; “causing confusion” may merely involve “perplexing or mixing up the minds” of potential customers; [22]

    (i)the usual manner in which ordinary people behave must be the test of what confusion or deception may be expected, having regard to the character of the customers who would be likely to buy the goods in issue;[23]

    (j)it is not necessary to establish actual probability of deception or confusion, but a mere possibility of confusion is not enough. There must a real, tangible danger of deception or confusion occurring. It is enough if the notional buyer would entertain a reasonable doubt as to whether, due to the resemblance between the marks, the two products come from the same source. Put another way, there must be “a real likelihood that some people will wonder or be left in doubt about whether the two sets of products ... come from the same source”;[24]

    (k)evidence of actual confusion is of great weight, but not essential, and lack of such evidence may also be relevant;[25] and

    (l)any intention to deceive or cause confusion may be a relevant consideration but is not required.[26]

    [17] Australian Woollen Mills Ltd v F S Walton & Co Ltd (1937) 58 CLR 641, 658 (Dixon and McTiernan JJ) (‘Australian Woollen Mills’).

    [18] Ibid.

    [19] Ibid.

    [20] Swancom (n 15), [70], [77]-[80].

    [21] Shell (n 7), [5].

    [22] Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107, 122 [39] (Black CJ, Sundberg and Finkelstein JJ) quoting Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50, 62 (Richardson J).

    [23] Campomar Sociedad Limitada v Nike International Limited (2000) 202 CLR 45, 79 [83] (Gleeson CJ, Gaudron, McHugh, Gummow, Kirby, Hayne and Callinan JJ).

    [24] Registrar of Trade Marks v Woolworths Ltd [1999] FCA 1020 [50(ii)] (‘Woolworths’) restating principles from Southern Cross (n 6), 594-595.

    [25] Australian Woollen Mills (n 17), 658.

    [26] Hashtag Burgers Pty Ltd v In-N-Out Burgers Inc (2020) 385 ALR 514, 533 [67] (Nicholas, Yates and Burley JJ) citing Australian Woollen Mills (n 17), 657.

14. In light of the authorities, I must decide whether there is a real, tangible danger of deception or confusion by reason of the use of the Trade Mark, having regard to the imperfect recollection of the notional consumer. That is not to be judged by a side by side comparison of the Trade Mark and the Opponent’s Mark. I must compare the marks as wholes, visually and aurally with regard to essential or distinguishing features, in the context of the relevant surrounding circumstances. Of importance is the effect and meaning of the trade marks, particularly their effect or impression produced on the mind of ordinary consumers.

    25.    The Opponent submits that the Trade Mark is deceptively similar to the Opponent’s Mark as:

    ·aurally, the element CYCLON is the first and essential element of both marks, consisting of the same syllables and having the same identical pronunciation in both marks;

    ·visually, both marks share the common element CYCLON. Given the first part of a trade mark is generally the most important for comparative purposes, the common first element CYCLON in the respective trade marks creates a significant visual and aural resemblance;

    ·the only point of difference between the marks are the letters IC which are commonly used as a suffix and have a functional and linguistic purpose which enhances, rather than detracts from, the essential nature of the element CYCLON, particularly noting that suffixes are less likely to be recalled and more likely to be mispronounced;

    ·it is also appropriate to consider the surrounding circumstances when assessing deception and confusion, including the prospective purchaser and the normal and fair use of the relevant goods and/or services. Clothing, footwear and headwear products in Class 25 are often relatively inexpensive and purchased quickly, and although consumers are likely to give some consideration to the suitability of the goods for their particular needs, the goods are not so technical or costly that the degree of attention paid by the average consumer would sufficiently guard against the risk of confusion.

    26.    It is a general principle in comparing trade marks for the purposes of deceptively similarity that they be considered as a whole. The fact that one trade mark is incorporated in another is, by itself, not sufficient to make the trade marks deceptively similar. In some cases, a trade mark conveys an overall conceptual meaning sufficiently different from another trade mark which is contained within it, such that the trade marks are not deceptively similar.[27] There are a number of factors that are relevant to this consideration, including, the extent to which a shared element has retained its identity as an essential feature of the trade marks[28] and whether the additional element changes the idea and impression of the mark as a whole.

    [27] See for example Kingsley v Scott [2011] ATMO 20 (Hearing Officer Wilson) and Jockey International Inc v Wilkinson [2010] ATMO 22 (Hearing Officer Spence).

    [28] Bulova Accutron Trade Mark [1969] RPC 102 (Stamp J).

    27.    In my view, the ideas and impressions formed by the two trade marks are very different, notwithstanding that there is some visual and aural similarity in the marks and that one is wholly contained within the other. Both marks are single words and neither lend themselves to mispronunciation. The likely impression and connotation that consumers would form and recall of the element CYCLON is that of an invented two syllable word likely to be pronounced ‘SIGH - KLON’. CYCLON does not convey any meaning familiar to the Australian public. On the other hand, CYCLONIC is a three syllable word pronounced as ‘SIGH-CLON-IC’ which is familiar to the Australian public. Given that the Trade Mark is a known word and conveys a distinctive meaning or impression of its own, in my view this diminishes the effects of imperfect recollection and there is little possibility that the suffix IC is less likely to be recalled nor more likely to be mispronounced.

    28.    I do not consider that the word CYCLON has retained its identity in the Trade Mark. The word CYCLON is not discernible as a discrete entity within the Trade Mark. Rather it is subsumed in the Trade Mark and the result is that the connotation of the Trade Mark is sufficiently different to the connotation of the Opponent’s Mark. In my consideration, most people who are aware of the Opponent’s Mark would view the Trade Mark as being, or connoting, something different and as not indicating a connection between the parties or their goods and services in the course of trade. Thus, I find it is unlikely that upon recollection, even accounting for imperfect recollection, the average Australian consumer would confuse CYCLON and CYCLONIC.

    29.    As submitted by the Opponent, in respect of the Applicant’s Goods and the Opponent’s Goods, these goods are clothing, footwear and headgear. Therefore, the respective trade marks will be used for similar goods. The Opponent also submits however that clothing, footwear and headwear products are often relatively inexpensive and purchased quickly, and the goods are not so technical or costly that the degree of attention paid by the average consumer would sufficiently guard against the risk of confusion. I do not agree. Clothing, footwear and headgear consumers tend to take time to assess a brand before purchase and this would further serve to differentiate the trade marks.[29]

    [29] Conde Nast Publications Pty Ltd v Virginia Taylor [1998] FCA 864 (Burchett J); Suzanne Grae Corporation Pty Ltd v Design West Mode Pty Ltd [2019] ATMO 92 (Hearing Officer Cooper); Autumnpaper Ltd v Maya McQueen Pty Ltd [2016] ATMO 53 (Hearing Officer Richards); Hugo Boss AG v Tagmill Pty Ltd [2000] ATMO 23 (Hearing Officer Forno).

    30.    I note that the Opponent makes no submission regarding the Applicant’s Services and while I have no evidence before me as to whether the Applicant’s Services are more likely to be requested aurally or visually, either way, I consider that the Trade Mark is not deceptively similar to the Opponent’s Mark.

    31.    The test for confusion is whether a person ‘might be caused to wonder’ whether the goods or services originate from the same source, and there must be ‘a real, tangible danger’ of it occurring. It is highly unlikely that consumers with an imperfect recollection of CYCLON would immediately link CYCLONIC to a memory of association with CYCLON. The two marks are visually, aurally and connotatively dissimilar. I am not satisfied that the Trade Mark is deceptively similar to the Opponent’s Mark. The s 44 ground is therefore not established.

    Decision

    32.    Section 55 relevantly provides:

    Decision

    (1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:

    (a)to refuse to register the trade mark; or

    (b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;

    having regard to the extent (if any) to which any ground on which the application was opposed has been established.

    Note:For limitations see section 6.

    33.    The Opponent has failed to establish the ground of opposition it nominated in the SGP  Trade mark application 2368466 may proceed to registration not less than one month from the date of this decision.  If the Registrar is served with a notice of appeal before that time, I direct that registration shall not occur until the appeal is either withdrawn or discontinued.  Otherwise, the disposition of the Application should be in accordance with the Court’s order or direction.

    Costs

    34.    The Applicant has sought costs. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under s 221 in the relevant amounts under Schedule 8 of the Regulations

    Anne Makrigiorgos

    Hearing Officer

    Oppositions and Hearings

    Trade Marks and Designs

    22 May 2025