The trade marks “CYCLONIC” and “CYCLON” have been found to be deceptively similar in the Federal Court in On Clouds GmbH v Cyclonic, Inc [2026] FCA 647. The judgment is notable for its discussion of the concept of a hearing ‘de novo’, and in particular, the level of deference (if any) that the Court should have to the initial decision of the Registrar of Trade Marks. The decision is significant for businesses involved in proceedings before the Registrar of Trade Marks and should inform their thinking in relation to any appeal against the Registrar’s decision.
Cyclonic, Inc. sought to register “CYCLONIC” in classes 25 and 40. On Clouds GmbH opposed the application, citing its existing registration for “CYCLON” in class 25. A Delegate of the Registrar of Trade Marks held that the marks were neither substantially identical nor deceptively similar, and that the opposition therefore failed. On Clouds subsequently brought an appeal to the Federal Court.
In Australia, appeals from decisions of the Registrar of Trade Marks are determined on a ‘de novo’ basis, with the Court making a fresh decision on the material before it (as opposed to merely considering whether the Registrar had erred). With that context, the Court considered the extent to which it should have regard to the initial decision of the Delegate. That question was particularly important in this case because Cyclonic, Inc had not contested the appeal and therefore had not presented a contrary position to that advanced by On Clouds.
The Court observed that whilst the Delegate’s decision had a “particular practical utility” in these circumstances, in that it served the purpose of putting before the Court a contrary position, ultimately the Court’s task was to consider the issues “afresh” and “without undue regard” to the Delegate’s reasoning.
The Court ultimately took a different view to the Delegate, finding the marks to be deceptively similar having regard to their “combined visual similarity, significant aural similarity, and shared association with the idea of a cyclone”. The case is an important reminder to businesses that a favourable finding by the Registrar of Trade Marks is no guarantee that a Court will find similarly on appeal.
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