CISCO TECHNOLOGY INC V COMMONWEALTH SCIENTIFIC AND INDUSTRIAL RESEARCH ORGANISATION [2015] ATMO 26

This matter concerned the opposition by CISCO to a trade mark application filed by CSIRO for the below device.  The application covered a wide range of goods and services, however, the opposition focused on goods in Classes 9 and 16, and services in Classes 38, 41 and 42.

Click here to view the image.

Under section 44, the opponent argued that the CSIRO trade mark was similar to its prior CISCO logos (shown below) and cover similar goods and services in the opposed classes.

  Click here to view the image.

In discussing the comparison of the respective trade marks, the Hearing Officer noted that the vertical stripe elements would be noted by consumers as being a map of Australia and a representation of the Golden Gate bridge in San Francisco, respectively.  The Hearing Officer also noted that the word elements CSIRO and CISCO are similar, with the same number of letters, the same first and last letters.

However, the Hearing Officer concluded that there was not likely to be any confusion between the trade marks, as, in part, because the trade mark CISCO is anform of the city name San Francisco.  This and the image of the Golden Gate bridge (mentioned above) reinforce the opponent’s trade mark as distinct from the applicants.  The distinctiveness of the trade marks was, according to the Hearing Officer, reinforced by the well-known nature of the CSIRO and CISCO trade marks and the sophisticated nature of the goods and services at issue.

Having found that deception or confusion between the trade marks was not likely to arise, the Hearing Officer applied the same thinking to the section 60 ground and noted that the opponent has a significant reputation but was not satisfied that deception or confusion was not likely to arise.

Likewise, the section 42 ground also failed as deception or confusion (in breach of the Australian Consumer Law) was not likely.

The CSIRO trade mark is to proceed to registration in respect of all the goods and services covered under the application.

To view the Office decision, click here.