TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH
REASONS
Re:
Opposition by Cordiant Communications Group Plc to applications for removal by
Chordiant Software, Inc of trade mark registrations 661447 (35) and 661448 (42) –
CORDIANT – registered in the name of Cordiant Communications Group Plc.
Background
On 10 April 2001, Chordiant Software, Inc (‘Software’) of California in the United States of
America, filed applications to remove trade mark registrations 661447 and 661448 of the
word CORDIANT from the Register of Trade Marks. The registrations are in Classes 35 and
42, respectively, of the International (Nice) Classification of Goods and Services and the
services specified by the registrations are:
Advertising, market research, marketing studies, public relations, personnel
recruitment, placement and management and business organisation, planning,
information and management consultancy services; promotional services for the
sale of goods and services
Commercial and packaging design, printing; photography; typesetting; computer
programming; data base accessing
On 3 August 2001, the owner of the trade marks, Cordiant Communications Group Plc,
(‘Communications’) of London, England, filed Notices of Opposition (‘the Notices’) to the
removal of the registrations.
The grounds stated in the Notices, and argued at the subsequent hearing, are twofold:
The applicant [who I designate ‘Software’] is not a person aggrieved within the
meaning of subsection 92(1) of the Trade Marks Act 1995; and
The trade mark has in fact been used by the registered owner in respect of the
services covered by the registrations.
The parties have served and filed their evidence in support and evidence in answer. The
matters were heard by me, as a delegate of the Registrar of Trade Marks in Sydney on Friday
[2]
25 October 2002. David Kell of Counsel represented Communications; Trevor Stephens of
Davies Collison Cave represented Software.
The Evidence
The evidence served and filed by the parties concerning these