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

This decision concerns an opposition by On Clouds GmbH to the registration of trade mark application number 2368466, filed by an unnamed applicant, for goods in classes 25 (clothing, footwear, and headwear) and services in class 40. The opposition was heard by Anne Makrigiorgos, a Hearing Officer in the Trade Marks and Designs section. The core of the dispute revolved around whether the applicant's proposed trade mark, CYCLONIC, was deceptively similar to On Clouds GmbH's existing trade mark, CYCLON, for the purposes of the *Trade Marks Act 1995* (Cth).

The legal issues before the Hearing Officer were whether the applicant's trade mark CYCLONIC was deceptively similar to the opponent's trade mark CYCLON, having regard to the imperfect recollection of the notional consumer, and whether this similarity constituted a ground for opposition under section 44 of the *Trade Marks Act 1995* (Cth). The Hearing Officer was required to compare the marks as wholes, considering their visual and aural aspects, their essential features, and the context of their use, particularly in relation to clothing, footwear, and headwear.

The Hearing Officer applied the principles of trade mark comparison, emphasising that a side-by-side comparison is inappropriate and that marks should be assessed based on the overall impression they create. While acknowledging the visual and aural similarities and the common element CYCLON, the Hearing Officer found that the addition of the suffix "IC" to create CYCLONIC significantly altered the overall impression and meaning of the mark. The Hearing Officer reasoned that CYCLONIC is a familiar word with a distinct meaning, unlike the invented word CYCLON, and that this distinctiveness, coupled with the fact that consumers of clothing and footwear tend to assess brands carefully, diminished the likelihood of deception or confusion. The Hearing Officer concluded that the word CYCLON had not retained its identity as an essential feature within CYCLONIC, and that the marks were visually, aurally, and connotatively dissimilar, meaning there was no real, tangible danger of deception or confusion.

Consequently, the Hearing Officer found that the ground of opposition under section 44 was not established. The application for trade mark number 2368466 was therefore permitted to proceed to registration, subject to a one-month waiting period from the date of the decision, unless a notice of appeal was filed. The applicant was awarded costs against the opponent.