Re: Trade mark application number 2286658 (35) -Cohere Studio in the name of Georgia St. Claire Forsyth

This matter concerned an application for registration of the trade mark "COHERE STUDIO" by Georgia St. Claire Forsyth, opposed by the owner of the cited trade mark "COHERE". The primary dispute revolved around whether the applicant's trade mark was deceptively similar to the cited trade mark for related services, leading to a potential rejection under section 44 of the *Trade Marks Act 1995* (Cth). The decision was made by Bianca Irgang.

The legal issues before the court were whether the applicant's trade mark "COHERE STUDIO" was deceptively similar to the cited trade mark "COHERE" for the services applied for, and if so, whether the applicant could overcome this ground for rejection through evidence of prior continuous use under section 44(4) of the Act. The court was required to apply the established tests for deceptive similarity, considering the overall impression of the marks, their sound, look, and idea conveyed, and the surrounding circumstances, to determine the likelihood of confusion among ordinary persons of intelligence and memory.

The court applied the principles of deceptive similarity as established in *The Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd*, focusing on the impression left by the marks on consumers, rather than a side-by-side comparison. It was found that the common element "COHERE" was distinctive and memorable, making the marks deceptively similar for related retail services. However, the applicant sought to rely on section 44(4) by arguing prior continuous use. While the applicant demonstrated use of "COHERE STUDIO" for nutritional consultancy and the sale of nutritional supplements and adult toys (vibrators and charging cables) online and through hotel vending machines, this use was not considered sufficiently broad to justify acceptance of the trade mark for the entire specification of "retail services including online retail services".

Ultimately, the court was satisfied that the applicant had established prior continuous use of the trade mark for specific retail services, namely "retail of nutritional supplements; retail of adult toys being vibrators and their accessories being charging cables". While this did not permit acceptance for the broader claimed services, it was sufficient to overcome the section 44 ground for rejection for these limited services. The application was therefore accepted for these specific retail services.