Catchoftheday.com.au Pty Ltd v Trinity Two Pty Ltd

Catchoftheday.com.au Pty Ltd (the applicant) sought to register a trade mark, and Trinity Two Pty Ltd (the opponent) opposed this application. The dispute concerned whether the applicant's proposed trade mark was substantially identical or deceptively similar to the opponent's registered trade mark, "CATCH OF THE DAY," and other registered trade marks. The matter came before the court for determination.

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.