Sherpa Pty Ltd (“Sherpa”) applied to register the SHERPA trade mark in Classes 9 and 39, under application No. 1021637. The application was opposed by Urban Sherpa Ltd (“Urban”) on various grounds, including its prior use and registration of the trade mark URBANSHERPA.
The relevant date for determining the opposition was 17 June 2015. In its evidence, the opponent was only able to establish use of the URBANSHERPA mark in the New Zealand market for one day prior to the relevant date. As a result, the opponent was found to lack the necessary reputation in its trade mark URBANSHERPA to support the majority of its claimed grounds of opposition.
However, under Section 25(1)(b), the opponent claimed that the SHERPA trade mark was similar to its registered trade mark No. 978499 URBANSHERPA, for the same or similar goods and services, and its use was therefore likely to deceive or confuse.
The Class 39 services of the URBANSHERPA registration were found to be similar to the Class 39 services of the applied for SHERPA application. However, Sherpa’s Class 9 goods were found to be distinguishable.
Further, it was held that the SHERPA and URBANSHERPA marks were sufficiently similar for the purposes of Section 25(1)(b). The Hearing Officer held that the distinctive and significant part of the opponent’s mark is the word “Sherpa” as the word “Urban” is commonly used to indicate a business operating in an urban context. As such, if the SHERPA mark were used in relation to the applied for services in Class 39, it would be likely to deceive or confuse a considerable section of the public.
The opposition was therefore upheld, but only in relation to the Class 39 services.
To view the Office decision, click here.
This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.