Cypher Pty Limited v Halliburton Energy Services Inc [2015] ATMO 37 (6 May 2015)

Halliburton filed a non-use removal application against Cypher’s registration for CYPHER Logo (shown below). The non-use removal was opposed by Cypher.

The Hearing Officer was quick to note that Halliburton is the owner of what at the time was a pending application for CYPHER in relation to ‘oil and gas well services’ (Class 42).

Halliburton did not dispute the use Cypher had made of its trade mark in relation to most of the goods and services covered under its registration. It did, however, question whether there had been any use in relation to its Class 42 services. Accordingly, the Hearing Officer focused on this aspect of the matter.

The Hearing Officer found that whilst Cypher had not engaged in ‘scientific research’ services it had provided ‘technological research’ services, which was sufficiently close to scientific research to be considered use of the same (at least in relation to some of those services).

So, Cypher was permitted to retain its Class 42, but the Hearing Officer also found that the Registrar’s discretion should be applied and Cypher’s services in Class 42 restricted and those remaining are not, in the Hearing Officer’s view, close enough to the oil and gas well services of Halliburton to be considered similar.

The non-use removal application was partly successful and the Halliburton application should proceed to registration.