IP Australia clarifies 5 Seconds of Summer trademark confusion

Australia’s intellectual property office has confirmed that it has accepted a trademark application by pop band, 5 Seconds of Summer, despite it initially being rejected because an examiner had “never heard of” them.

Speaking to WIPR, George Vuckovic, acting general manager of the trademarks and designs group at IP Australia, explained that that the office has accepted the application.

Last week, WIPR reported that the group’s production company, One Mode Productions, applied to have the band’s nickname ‘5SOS’ registered as a trademark with IP Australia, claiming the term was synonymous with the band.

But despite a number one album and more than five million Twitter followers, the application was rejected by examiner Iain Thompson because he had not heard of the band.

“The name of this group is not notorious: apart from these proceedings, I have not encountered the group and it is not suggested in the declaration that the group is notorious,” Thompson said.

Despite this, a trademark search on IP Australia’s website suggested that the application had in fact been subsequently accepted by Thompson, sparking confusion.

Vuckovic has now revealed that Thompson’s initial decision was based on the application “not supporting a finding that ‘5SOS’ was at the requisite level of ‘notoriety’”, a term he said has specific meaning in Australian trademark law.

He added that One Mode was told the application would be rejected unless it agreed to remove class 25 and “some of the services” in class 41 from the application. Class 25 covers clothing, footwear and headgear, while class 41 cites education, training, entertainment, and sporting and cultural activities.

“The applicant agreed to the amendments of the specification,” Vuckovic said.

He added: “As the trademark has now been accepted, the two-month opposition period will now commence. Anyone can oppose the registration and has until February 11, 2015 to lodge a notice of opposition. In the absence of an opposition, the trademark will be registered.”

One Mode has already registered the mark ‘5 Seconds of Summer’ at the Office for Harmonization in the Internal Market.