TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Catchoftheday.com.au Pty Ltd to registration of trade mark application 1775350 (35) - Catchmestore.com.au - filed in the name of Trinity Two Pty Ltd.
| Delegate: | Iain Campbell Thompson |
| Representation: | Opponent: Applicant: |
| Decision: | 2018 ATMO 170 Trade Marks Act 1995 Section 52 opposition to registration – no evidence in support of the opposition filed; section 44, trade mark not substantially identical or deceptively similar to Opponent’s registered trade marks. Opposition to registration not established |
Background
In these proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) Trinity Two Pty Ltd (‘the Applicant’) has applied to register the trade mark which appears below:
Application No: 1775350
Priority Date: 7 June 2016
Services:Class 35: Retailing of goods (by any means); wholesaling of goods (by any means); retail services; retail services conducted on-line; on-line marketing of products; on-line retail and catalogue services; on-line sales; retailing and merchandising services; presentation of goods on communication media, for retail purposes; retail store or shop services; retail selling services; on-line promotion on a computer network; demonstration of goods and services; discount services (retail, wholesale or sales promotion services); distribution of goods (agent, wholesale, representative services, by any means, not being transport services); advertising services; advertising services provided over the Internet; direct market advertising; dissemination of advertising material; business promotion services; sales promotion through customer loyalty programmes (for others); production of home shopping programmes (production of advertisements and commercials); none of the foregoing being in relation to seafood
Trade Mark: Catchmestore.com.au
(‘the Trade Mark’)
The Trade Mark was examined as prescribed by section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 27 October 2016.
On 14 November 2016, Catchoftheday.com.au Pty Ltd (‘the Opponent’) filed a Notice of Intention to Oppose the registration of the Trade Mark. Thereafter, the opposition process has followed the timetable set out below:
15 November 2016 – Statement of Grounds and Particulars filed by the Opponent – grounds under sections 44, 58A, 60, 42, and 62A detailed;
23 December 2016 – Notice of Intention to Defend filed by the Applicant;
12 July 2017 – Evidence in Answer filed by the Applicant – declaration by Shibu Joseph, Director of the Applicant.
Both parties have been informed of their right to be heard or to make written submissions. Neither party has availed themselves of these opportunities; however, I note that the Evidence in Answer consists largely of submissions. Now, in order that the Registrar may discharge the obligation on her to decide this matter, it has been passed to me – one of her delegates – for my decision on the written record.
Grounds, Onus and Relevant Date
The Opponent bears the onus of establishing the grounds of opposition under sections 44, 58A, 60, 42, and 62A which are detailed in the SGP on the…
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- AGLC
- Catchoftheday.com.au Pty Ltd v Trinity Two Pty Ltd [2018] ATMO 170
- Case
- [2018] ATMO 170
- Decision Date
CaseChat Overview and Summary
The primary legal issue before the court was whether the applicant's trade mark satisfied the requirement under section 55 of the relevant Act that it be "substantially identical or deceptively similar" to the opponent's registered trade mark. This involved assessing the overall impression of resemblance or dissimilarity between the marks, considering their essential features and the context of the services for which they were intended.
In reaching its decision, the court applied the principles outlined in *Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd*, which requires a side-by-side comparison of the marks, noting similarities and differences, and assessing their importance in light of the essential features of the registered mark and the total impression of resemblance. The court identified the "dominant cognitive cue" within the applicant's trade mark, "Catchmestore.com.au," as "Catch Me," considering the word "store" to be functional in the context of an internet store. When comparing "Catch Me" with the opponent's mark "CATCH OF THE DAY," the court found a "total impression of dissimilarity." It reasoned that each word in "CATCH OF THE DAY" was essential to its meaning, unlike in cases where a word could be discounted as a descriptor.
Ultimately, the court found that the opponent had not established a ground of opposition. Consequently, the trade mark application was permitted to proceed to registration one month from the date of the decision, unless a notice of appeal was served on the Registrar, in which case registration would be stayed pending the outcome of the appeal.
Orders
Orders of the court
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Background
Background to the litigation
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Evidence
Evidence Before The Court
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Decision
Reasons for decision
Ratio Decidendi
Legal Principle Established
It remains to be discussed whether the trade marks under consideration might be substantially identical or deceptively similar and that the third requirement is thus satisfied. In this regard it is convenient to discuss these issues only in relation to the Opponent’s trade mark registration 1287718 (35) CATCH OF THE DAY (‘the Registration’) with the observation that if the ground is well founded in relation to that registration consideration of the other trade marks upon which the Opponent relies is otiose as such a finding in respect of a single trade mark is sufficient to establish the ground. . On the other hand, if the ground is not founded in relation to the Registration it could not be founded in relation to the balance of the registrations upon which the Opponent relies as they are more dissimilar to the Trade Mark. In Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd (‘Shell’) Windeyer J stated:[3]In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. "The identification of an essential feature depends", it has been said, "partly on the Court's own judgment and partly on the burden of the evidence that is placed before it": de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O'Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.[3] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12]. In considering whether the Trade Mark and that of the Registration are substantially identical, the ‘dominant cognitive cue’[4] within the Trade Mark is the stressed portion within the domain name Catchmestore.com.au. In the context of the services – an Internet ‘store’ – the word ‘store’ is not functioning as a ‘dominant cognitive cue’. There is little doubt that most people will immediately recognise the stressed portion of the Trade Mark as being the English words ‘Catch Me’. Thus, when considering whether the trade marks are substantially identical, I am to compare the indicia CATCH OF THE DAY and CATCH ME.[4] See Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd [2017] FCAFC 56; (2017) 345 ALR 205 or Pham Global Pty Ltd v Insight Clinical Imaging Pty Ltd [2017] FCAFC 83. There is, in my view, a total impression of dissimilarity when the two trade marks are considered side by side: the Trade Mark forms an expression used in eateries which feature a fish dish which varies according to what is available to the cook/chef. Each word within the Trade Mark is essential to its meaning and none might be discounted in the comparison as might the word ‘Cairns’ within the trade mark CAIRNS HARBOUR LIGHTS[5] or the word ‘Choc’ within the trade mark CHOC CHILL.[6][5] Ibid.[6] PB Foods Ltd v Malanda Dairy Foods Ltd [1999] FCA 1602; (1999) 47 IPR 47; [1999] AIPC 40-117.