Madfish Gear Ltd v David Lawrence

Madfish Gear Ltd opposed an application by David Lawrence to register the trade mark "MAD ABOUT FISHING" for fishing goods and services. The opposition was based on section 44 of the *Trade Marks Act 1995* (Cth), which requires an application to be rejected if the applicant's trade mark is substantially identical with, or deceptively similar to, a registered trade mark for similar goods or services, provided the registered trade mark has an earlier priority date. The opponent, Madfish Gear Ltd, relied on its registered trade mark, which also covered fishing apparatus and the wholesale, retail, and distribution of fishing products.

The primary legal issue before the Hearing Officer was whether the applicant's proposed trade mark, "MAD ABOUT FISHING," was substantially identical with or deceptively similar to the opponent's registered trade mark. To succeed in its opposition under section 44, the opponent had to establish that its registered trade mark was either substantially identical or deceptively similar to the applicant's trade mark, that the goods and services were similar or closely related, and that its priority date was earlier than that of the applicant's trade mark.

The Hearing Officer found that the opponent had not met the onus of establishing that the applicant's trade mark was substantially identical or deceptively similar to its own. Applying the "side-by-side" test, the Hearing Officer noted clear visual and verbal differences between the two marks. Specifically, the applicant's mark included the additional word "ABOUT" and the differing word "FISHING" at the end, whereas the opponent's mark featured a stylized graphic of a fish. These differences were considered substantial enough to preclude the marks from being deemed substantially identical.

Consequently, the Hearing Officer decided to refuse the opposition. The application for the trade mark "MAD ABOUT FISHING" was permitted to proceed to registration one month from the date of the decision, unless an appeal was filed. The opponent was ordered to pay the applicant's costs.