Republic Consulting Pty Ltd v Nhan Chiem

This matter concerned an application by Republic Consulting Pty Ltd to register the trade mark RE:PUBLIC. The application was opposed by Nhan Chiem. The hearing officer, Terry Williams, was required to determine whether the applicant's proposed mark was substantially identical or deceptively similar to the opponent's registered trade mark REPUBLIC.

The central legal issue was whether the inclusion of a colon in the applicant's mark, RE:PUBLIC, rendered it substantially identical or deceptively similar to the opponent's mark, REPUBLIC, for the purposes of trade mark law. The hearing officer had to consider the principles of comparison of trade marks, including the "total impression" test and the assessment of essential features.

The hearing officer applied the principles established in *The Shell Co. of Australia Ltd. v. Esso Standard Oil (Australia) Ltd.* and *Carnival Cruise Lines Inc v Sitmar Cruises Ltd*. He noted that while the colon had a negligible effect on the sound of the mark, it created a distinct visual and semantic difference, introducing a play on words relevant to public relations services. This visual and conceptual distinction meant that RE:PUBLIC was not substantially identical to REPUBLIC. The hearing officer found that the opponent had established its ground of opposition.

Consequently, the hearing officer refused to register the application and ordered that the applicant pay the costs of the opponent.