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On Clouds v Cyclonic: Can Similar Trade Marks Coexist?

By Samantha Ludemann | Associate

Would you be confused by these two trade marks? Are they deceptively similar?

In our latest article, Associate Samantha Ludemann of XVII Degrees examine the recent decision by Delegate Anne Makrigioros, delivered on 22 May 2025 at the Australian Trade Marks Office (ATMO), in the matter of On Clouds GmbH v Cyclonic, Inc [2025] ATMO 91. Samantha examines the legal criteria used to assess whether two brands with visually similar trade marks can coexist within the same product classes in a competitive market. 

On Clouds GmbH v Cyclonic, Inc: Who’s Who in the Trade Mark Dispute?

On Clouds GmbH, a Swiss company, known for its trade mark “On” has established itself as a leader in performance sportswear and athletic shoes. Renowned for their innovative “CloudTec” cushioning technology. 

Although limited information is available about the business online, Cyclonic, Inc., who is based in New York, is the applicant in this dispute. Cyclonic, Inc. sought to register the trade mark “CYCLONIC” in Australia under classes 25 (clothing) and 40 (recycling of textiles). 

On Clouds GmbH opposed the registration of “CYCLONIC,” arguing that it was confusingly similar to its own “CYCLON” trade mark, particularly in the context of sportswear and footwear.  

The opposition was largely in relation to section 44 of the Trade Marks Act 1995 (Cth), which addresses the likelihood of confusion arising from similar marks. 

Key Issues Considered  

The core of the dispute was whether the “CYCLONIC” mark was deceptively similar to On Clouds GmbH’s “CYCLON” mark, such that consumers might be misled or confused.  

The Delegate considered several key factors: 

  • The Opponent argued that “the suffix ‘IC’ enhances, rather than detracts from, the essential nature of the ‘CYCLON’ element in the trade mark,” but the Delegate ultimately disagreed, finding that the addition of “IC” altered the overall impression of the mark.
  • “CYCLON” was viewed by the Delegate as an invented term with no inherent meaning, whereas “CYCLONIC” is a familiar word to Australian consumers, conveying its own distinct identity.
  • The reputation of the opponent was also considered, with the delegate noting that “most people who are aware of the Opponent’s mark would view the trade mark as being, or connoting, something different, and as not indicating a connection between the parties”
  • The Delegate rejected the argument that clothing, footwear, and headgear are impulse buys, instead emphasising that consumers in these markets generally pay attention to brand identity and are less likely to be confused between the two trade marks.

Outcome 

The opposition by On Clouds GmbH was ultimately unsuccessful. The Delegate found that, despite superficial similarities, there was no real likelihood of confusion or deception among consumers. The “CYCLONIC” mark was allowed to proceed to registration, and costs were awarded against On Clouds GmbH. 

However, following this decision On Clouds GmbH has further escalated the matter by filing proceedings in the Federal Court of Australia, seeking to overturn the Trade Mark Office’s decision and prevent Cyclonic from registering its mark. 

This case highlights that, under section 44 of the Trade Marks Act 1995 (Cth), simply sharing a root word isn’t enough, it’s the overall impression of the respective marks that matters. 

It’s a reminder for brand owners that reputation or prior use alone doesn’t guarantee success in an opposition. Ultimately, the key considerations are distinctiveness and how consumers perceive the brand. 

If you have questions about brand names or trade marks, please reach out to us at XVII Degrees.  

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References:

Photo by Kostiantyn Li on Unsplash

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