Catchoftheday.com.au Pty Ltd v Trinity Two Pty Ltd
[2018] ATMO 170
•23 October 2018
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 balance of probabilities.[1] With the exception of the ground under section 44, where the registrations relied upon by the Opponent are specified within the Statement of Grounds and Particulars, each of the grounds (including that under section 62A of the Act which I briefly touch on below) cannot be established in the absence of evidence of the reputation of a trade mark or trade marks used by the Opponent or under its aegis.
[1] Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6]-[26]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]-[133].
The relevant date (‘the Relevant Date’) at which the section 44 ground must be considered is the filing date[2] of the opposed application which is here the same as the term ‘priority date’ used within that section.
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1953] HCA 73; (1954) 91 CLR 592.
Evidence
As I have noted, there is no Evidence in Support of the Opposition. What little can be gleaned from the Evidence in Answer is that, at the Relevant Date, the Applicant used or proposed to use the Trade Mark in relation to an online retail store.
Section 44
Statement of Grounds and Particulars:
In its Statement of Grounds and Particulars the Opponent asserts:
The trade mark is substantially identical/deceptively similar to the following trade marks: 1287718, 1391296, 1435771, 1478869, 1668360, 1679208.
Discussion
Section 44 of the Act relevantly provides:
44 Identical etc. trade marks
[…]
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods is being sought by another person; and
(b)the priority date for the registration of the applicant’s trade mark in respect of the applicant’s services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1:For deceptively similar see section 10.
Note 2:For similar services see subsection 14(2).
Note 3:For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
In order to establish its opposition to registration of the Trade Mark the Opponent must be able to point to a registered or pending trade mark in the name of a person other than that of the Applicant which satisfies each of the following:
1. It has a priority date earlier than that of the Trade Mark; and
2. It is registered or pending in respect of the similar services or closely related goods as those of the Trade Mark; and
3. It is substantially identical or deceptively similar to the Trade Mark.
(Respectively, the first, second, and third requirements)
The Opponent relies on the following trade mark registrations:
Registration No: 1287718
Priority Date: 4 March 2009
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; store or shop services; 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: CATCH OF THE DAY
Registration No: 1391296
Priority Date: 28 October 2010
Goods/Services: Class 16: Magazines and printed materials, posters, brochures and other advertising or promotional material
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; store or shop services; selling services; on-line promotion on a global 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 a global communications network; 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); advertising on a global computer communications system; electronic advertising; advertising services provided over a global communications network; advertising services provided via a database; direct market advertising; dissemination of advertising material; dissemination of advertising matter; online advertising on a computer network; provision of advertising information; provision of advertising space; advertising; promotional advertising services; preparation of advertising material; business services specifically to support the creation, distribution, tracking and reporting of consumer printed coupons that can be used for traditional in-store redemption; online marketing of products; retailing and merchandising services; selling services; demonstration of goods and services; discount services (retail, wholesale and sales promotional services); advertising services; business promotion services; sales promotion (for others); sales promotion services; promoting the goods and services of others by providing a website featuring coupons, rebates, price comparison information, product reviews, links to the retail websites of others and discount information; compilation of advertisements for use as web pages on a global communications network; online promotion on a global computer network; sales promotions by issuing redeemable coupons (for others); promotional advertising services
Trade Mark:
Registration No: 1435771
Priority Date: 8 July 2011
Goods/Services: Class 9: Computer software applications, including for mobile telephones, smart phones, personal digital assistants, tablet devices and computers; application software; none of the foregoing in relation to seafood
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; store or shop services; 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 in relation to seafood
Class 42: Online provision of web-based applications; provision of online non-downloadable software (application service provider); none of the foregoing in relation to seafood
Trade Mark: TODAYS CATCH
Registration No: 1478869
Priority Date: 7 March 2012
Services:Class 35: Retailing of goods (by any means); wholesaling of goods (by any means); retail services; retail services conducted online; online marketing of products; online retail and catalogue services; online sales; retailing and merchandising services; presentation of goods on communication media, for retail purposes; store or shop services; selling services; online 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)
Trade Mark:
Registration No: 1668360
Priority Date: 9 January 2015
Goods/Services: Class 16: Magazines and printed materials, posters, brochures and other advertising or promotional material
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; store or shop services; selling services; on-line promotion on a global 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 a global communications network; advertising services provided over the internet; direct market advertising; advertising on a global computer communications system; electronic advertising; advertising services provided via a database; dissemination of advertising material; electronic advertising; internet advertising; online advertising on a computer network; provision of advertising information; direct market advertising; dissemination of advertising material; dissemination of advertising matter; business promotion services; sales promotion through customer loyalty programs (for others); production of home shopping programs (production of advertisements and commercials); provision of advertising space; advertising; promotional advertising services; preparation of advertising material; business services specifically to support the creation, distribution, tracking and reporting of consumer printed coupons that can be used for traditional in-store redemption; online marketing of products; retailing and merchandising services; selling services; business promotion services; sales promotion (for others); sales promotion services; promoting the goods and services of others by providing a website featuring coupons, rebates, price comparison information, product reviews, links to the retail websites of others and discount information; compilation of advertisements for use as web pages on a global communications network or on the Internet; online promotion on a global computer network; sales promotions by issuing redeemable coupons (for others); promotional advertising services; business management and business administration services; advertising services including those for distributing and advertising commercial pamphlets and prospectuses and the distribution of product samples
Trade Mark:
Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied
Registration No: 1679208
Priority Date: 5 Mar 2015
Goods/Services: Class 16: Magazines and printed materials, posters, brochures and other advertising or promotional material
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; store or shop services; selling services; on-line promotion on a global 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 a global communications network; advertising services provided over the internet; direct market advertising; advertising on a global computer communications system; electronic advertising; advertising services provided via a database; dissemination of advertising material; electronic advertising; internet advertising; on-line advertising on a computer network; provision of advertising information; direct market advertising; dissemination of advertising material; dissemination of advertising matter; business promotion services; sales promotion through customer loyalty programs (for others); production of home shopping programs (production of advertisements and commercials); provision of advertising space; advertising; promotional advertising services; preparation of advertising material; business services specifically to support the creation, distribution, tracking and reporting of consumer printed coupons that can be used for traditional in-store redemption; online marketing of products; retailing and merchandising services; selling services; business promotion services; sales promotion (for others); sales promotion services; promoting the goods and services of others by providing a website featuring coupons, rebates, price comparison information, product reviews, links to the retail websites of others and discount information; compilation of advertisements for use as web pages on a global communications network or on the Internet; on-line promotion on a global computer network; sales promotions by issuing redeemable coupons (for others); promotional advertising services; business management and business administration services; advertising services including those for distributing and advertising commercial pamphlets and prospectuses and the distribution of product samples
Trade Mark:
Endorsement: Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied
I note now that the last two of the above registrations are registered in the name of Catch Group Pty Ltd; however, as the Opponent has not filed Evidence in Support, the nature of any relationship between Catch Group Pty Ltd and the Opponent is not clear.
The trade marks relied upon by the Opponent have priority dates earlier than that of the Trade Mark. The first requirement is thus satisfied.
The services enlisted under the Trade Mark are similar services to the services enlisted under the trade marks relied upon by the Opponent. Indeed, those services are identical to the Opponent’s Class 35 specifications within registrations 1287718, and 1435771. The second requirement is thus satisfied.
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.
Substantial identity
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.
The trade marks are not substantially identical.
Deceptive Similarity
In considering ‘deceptive similarity’ Windeyer J stated in Shell:[7]
On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity. Therefore the comparison is the familiar one of trade mark law. It is between, on the one hand, the impression based on recollection of the plaintiff's mark that persons of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television exhibitions. To quote Lord Radcliffe again: "The likelihood of confusion or deception in such cases is not disproved by placing the two marks side by side and demonstrating how small is the chance of error in any customer who places his order for goods with both the marks clearly before him . . . . It is more useful to observe that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole": de Cordova v. Vick Chemical Co (1951) 68 RPC, at p 106. And in Australian Woollen Mills Ltd v. F.S. Walton & Co. Ltd. [1937] HCA 51; (1937) 58 CLR 641 Dixon and McTiernan JJ. said: "In deciding this question, the marks ought not, of course, to be compared side by side. An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought. The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same" (1937) 58 CLR, at p 658.
[…]
The deceptiveness that is contemplated must result from similarity; but the likelihood of deception must be judged not by the degree of similarity alone, but by the effect of that similarity in all the circumstances.
[7] Op cit at [13].
Jacobson J in Millennium & Copthorne International Limited v Kingsgate Hotel Group Pty Ltd referred to earlier authorities and summarised the principles to be applied in the assessment of deceptive similarity: [8]
[8] [2012] FCA 1022, [38]-[46].
Without seeking to reformulate the various statements of principle stated in the Full Court authorities, it is sufficient for present purposes to identify the critical elements which seem to me to inform the issue of deceptive similarity in the present case. There are nine elements.
First, the judgment of likelihood of deception is a practical one. It requires an assessment of the effect of the challenged mark on the minds of potential customers: Woolworths[9] at [49]; Australian Woollen Mills[10] at 658.
Second, the question of deceptive similarity is not to be decided by a side-by-side comparison. It is to be determined by a comparison of the impression based on recollection of the opponent’s mark that persons of ordinary intelligence and memory would have, and the impression that those persons would get from the opposed trade mark: Crazy Ron’s[11] at [73]; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd [1963] HCA 66; (1963) 109 CLR 407 at 415 per Windeyer J.
Third, allowance must be made for imperfect recollection: Crazy Ron’s at [74].
Fourth, the effect of the spoken description must be considered: Woolworths at [49]; Crazy Ron’s at [75]; Australian Woollen Mills at 658.
Fifth, it is necessary to show a real tangible danger of deception or confusion: Woolworths at [43] and [50]; Crazy Ron’s at [76]; Southern Cross Refrigerating[12] at 594 – 595.
Sixth, a trade mark is likely to ‘cause confusion’ if the result of its use will be that a number of persons are ‘caused to wonder’ whether the two products come from the same source: Woolworths at [50]; Southern Cross Refrigerating Co at 595. This test sets a lower threshold than that which is required to establish that conduct is likely to mislead or deceive under s 18 of Schedule 2 of the Competition and Consumer Act 2010 (Cth): see McWilliam's Wines Pty Ltd v McDonald's System of Australia Pty Ltd [1980] FCA 159; (1980) 33 ALR 394 at 398 per Smithers J.
Seventh, all surrounding circumstances must be taken into consideration. The circumstances include those in which the marks will be used, and in which the goods or services will be bought and sold, as well as the character of the probable acquirers of the goods and services: Woolworths at [50]; Crazy Ron’s at [86] – [89]; Southern Cross Refrigerating at 595.
Eighth, the question of whether there is a likelihood of confusion is not to be answered by reference to the manner in which a party has used the mark, but by reference to what an applicant can do. That is to say, the use to which it can properly put the mark if registration is obtained: Woolworths at [50]; Berlei Hestia Industries Ltd v The Bali Company Inc [1973] HCA 43; (1973) 129 CLR 353 at 362 per Mason J.
Ninth, if a registered trade mark includes words which can be regarded as an ‘essential feature’ of the mark, another mark that incorporates those words may cause a tangible danger of deception or confusion by reason of consumers retaining an imperfect recollection of those words: Crazy Ron’s at [79]. However, care must be taken to not too readily characterise words in a composite trade mark as an ‘essential feature’ because to do so may effectively convert a composite mark into something different: Crazy Ron’s at [100].
[9] Registrar of Trade Marks v Woolworths Ltd [1999] FCAFC 1020.
[10] Australian Woollen Mills Ltd v FS Walton & Co Ltd [1937] HCA 51; (1937) 58 CLR 641.
[11] Crazy Ron’s Communications Pty Ltd v Mobileworld Pty Ltd [2004] FCAFC 196; (2004) 209 ALR 1.
[12] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
In making the assessment, I have considered the likelihood that the Opponent might be perceived to have a ‘family of trade marks’. In Energy Beverages LLC v Charlie Coglitore the Registrar’s delegate observed:[13]
It is well established that where there is a family of trade marks united by a common and distinctive element, there will usually be an expectation that any mark which incorporates that element will form part of the same family, so as to give consumers “cause to wonder” whether the two marks that share that element come from the same source: see, eg, McDonald’s Corporation v Macri Fruit Distributors Pty Limited [2000] ATMO 37.
In McDonald’s v Macri Fruit the marks under opposition were McSALAD and McFRESH. The Delegate held:
The type of confusion outlined here is founded on a perception that, within the context of the circumstances of the market-place, the applicant's marks are seen as being an extension of the opponent's registered trade marks due to a common element in the marks that leads to a conclusion that they identify the same trader. In the present circumstances the opponent has a family of 78 registered trade marks containing a word which has a prefix of Mc-. Of these 78 registered marks, 17 also have another common element. The second common element is that they consist of, or contain, words in which the prefix Mc- has been conjoined with a word which is either the name of the goods or services being sold, or a description of a quality or characteristic of the goods. [My emphasis added]
After listing the 17 relevant marks, the Delegate went on to observe:
Taken together, I believe that the family of 17 marks above, with one important proviso, supplies a sufficient expectation that any trade mark prefixed by Mc- which is conjoined to a word, which describes either the goods or services themselves or a quality or characteristic of the goods, would form part of the opponent's family of marks.
The important proviso here is that the goods or services referred to, in the part word conjoined to the prefix Mc- in the trade mark, would also need to be seen to form a normal or usual part of the opponent's business. Any food, or quality or characteristic of that food, which would be expected to form part of the opponent's fast food operation would, therefore, qualify. In the present circumstances, McSALAD and McFRESH both meet these requirements. The opponent does use 'salad' ingredients and the word 'fresh' describes a laudatory characteristic or quality that would also be expected to be in use in relation to the opponent's goods. Forming an extremely close parallel to the present applications I note that, among others, the opponent has registrations for McVEGETABLE and McVALUE. Several other registrations of the opponent could also be used to demonstrate this parallel. Thus, I find that these two trade marks, McSALAD and McFRESH, are deceptively similar, in a contextual sense, to each of the 17 trade marks listed above, owned by the opponent.
[13] [2018] ATMO 33 at [22].
An implication in the above is that an opponent (in order to found the ground) can point to registrations in the name of the same owner which contain the same unique distinguishing element. Here two of the registrations upon which the Opponent relies are owned by Catch Group Pty Ltd and there is no evidence what the relationship between that entity and the Opponent might be.
Accordingly, the Opponent does not, prima facie, have exclusivity in a ‘family of trade marks’ upon which it can rely.
The Applicant’s evidence consists largely of submission in which various decisions of the Registrar are relied upon in support of the Applicant’s argument that the trade marks are not deceptively similar. However, in my consideration there is not much to be gained from this kind of analysis since the comparison must be in the context of the marketplace for the relevant goods or services and what may not be deceptively similar in relation to the marketplace for (for example) cars where much time and consideration is spent before a purchase might be otherwise in relation to biscuits which are of low expense and casually purchased.
As I observed above, the denotation of the registered trade mark is quite specific and conjures a particular image to mind. The Trade Mark does not carry a similar meaning – it appears to be more of an invitation to be chased. The trade marks share only the word ‘catch’ and, although that word occurs at the beginning of the trade marks,[14] the trade marks contain other distinguishing matter and denote different things.
[14] See, for example, Diamond T Motor Car Co’s Appn (1921) 38 RPC 373.
Thus I do not consider that the Registrar could be satisfied that the trade marks are deceptively similar.
The Opponent has not established its opposition under section 44 of the Act.
Other
In the Statement of Grounds and Particulars, the Opponent has observed that Trade Mark’s services are identical to the Opponent’s Class 35 specifications within its registrations 1287718, and 1435771 and, coupled with the Opponent’s perceptions of the similarities of the parties’ trade marks, this suggests that the application was made in bad faith in terms of section 62A of the Act as it might suggest conscious copying.
In my consideration, this ground requires evidence to support it. Without evidence of why the Applicant would think to copy the Opponent’s trade mark (such as of the reputation of the Opponent’s trade mark), the ground could not be established.
Decision
Section 55 of the Act relevantly provides:
55Decision
(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note:For limitations see section 6.
The Opponent has not established a ground of opposition.
The trade mark application may then proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
23 October 2018
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