Societe Internationale de Telecommunications Aeronautiques v Aerocom Technology Pty Ltd [2015] ATMO 102 (22 October 2015)

The background to this dispute is straightforward: an Australian IT and telecommunications company called Aerocom Technology Pty Ltd (the applicant) filed an Australian trade mark for the brand “AEROCOM” covering classes 9, 37, 38, and 42.

The application was opposed by Societe Internationale de Telecommunications Aeronautiques (the opponent), which is an IT and telecommunications services provider for the air transport industry, operating in Australia.

The opponent has a service offering that provides air-to-ground communication marketed under the brand “AIRCOM”.

The “AIRCOM” brand has prior Australian registrations for classes 9, 38, and 42 and had been in use by the opponent since 1984.

The applicant’s use of “AEROCOM” only started in 2008.

There were several arguments mounted by the opponent. But the most interesting of these concerned the Greek etymology of the brand “AEROCOM”.

The opponent argued the relevance of the dictionary definition of “aero” as “of or relating to aircraft or aeronautics”, with its Greek meaning as “air”. The opponent also noted that there is an interchangeability within the English language of the prefixes “aero” and “air” for use with words such as “plane”.

In response, the applicant argued that there is no deceptive similarity between the two marks because the average person of ordinary intelligence would not look at the prefix element “AERO” within the trade mark and think of “air.”

Consumer understanding of foreign words is a topical issue in Australian trade mark practice. In December 2014, the High Court of Australia, in Cantarella Bros Pty Ltd v Modena Trading Pty Ltd [2014] HCA 48, was called upon to determine a cancellation action relating to two brands of Italian linguistic origin: whether the words 'ORO' and 'CINQUE STELLE' could function as trade marks in respect of coffee and coffee related products. Both 'ORO' and 'CINQUE STELLE' are Italian words, meaning 'gold' and 'five stars', respectively.

In the High Court's view, the words 'ORO' and 'CINQUE STELLE' would not be understood by ordinary Australians as having a direct or tangible reference to the quality of the relevant goods sold by Cantarella Bros, being coffee products. Put into other words with harsh but honest brevity, Australians are on the whole monolingual and do not understand foreign words. (The implications of this for trade mark owners using very descriptive terms in a foreign language are still being played out.)

Cantarella was not cited by either party in this dispute. But the High Court decision loomed large in this reasons for decision in this dispute: the hearing officer stated that the Greek definition of “aero” is irrelevant, because even people who are unaware of the Greek meaning associate the term with words like “aeronautics” and “aerodynamics”, both of which have the Greek root for “air.” “[W]hether or not the person of ordinary intelligence knows that “aero” is Greek for “air” does not detract from the common knowledge that “aero” relates to aeronautics and/or aerodynamics, and that such a connotation may be similar to “air”. The connotation arising from “aero” does so not only from its precise definition, but also by virtue of its use in ordinary English words such as “aeroplane” (the American spelling of which is “airplane”), “aerodrome” and “aerodynamic”… Whilst AERO and AIR are similar, neither is so unusual that their presence in different marks implies an attempt to associate one with the other (as might be the case for highly unusual invented words).”

The services covered by the application were broadly similar to the services covered by the opponent’s marks. One thing to note from that, particularly for American readers, is that the opponent’s very broad scope of the specifications in its registered marks assisted it in this dispute. US trade mark practice is to refine the scope of goods and services so as to precisely reflect what the mark is to be used for: in contrast, Australia (like many other Anglo-Commonwealth jurisdictions) permits a broad and sweeping scope. Such specifications cast a long shadow and can be very useful.

Otherwise, the opponent was successful on other grounds, with the hearing officer making that finding notwithstanding the unsuccessful applicant had been trading for seven years with no evidence of confusion. And with that, the application disappeared into thin aero.