Elmwood Design Limited v Dig & Fish Pty Ltd [2018] ATMO 114 (18 July 2018)

Elmwood Design opposed the application by Dig & Fish to register the trade mark DIG&FISH in connection with a range of business and information technology services.

The opponent is the owner of the registered Australian trade mark FISH, which covers the same types of services as the applicant’s DIG&FISH mark. The opponent’s evidence detailed use of its trade mark since 2010 and alleged a substantial reputation in that trade mark.

The opponent’s evidence was not, in the hearing officer’s view, sufficient to support its claim to having a reputation in the trade mark FISH solus. The evidence, as noted in the decision, included numerous examples of the trade mark ELMWOOD FISH in various stylisations and logo forms.

Having failed to establish a reputation, the section 60 and 42 grounds (which, in the context of this matter, both rely on a trade mark having a demonstrable reputation) of the opposition failed.

Turning to section 44, which deals with prior registered marks, the hearing officer took the view that FISH and DIG&FISH left distinct conceptual impressions on the mind and, as such, were not likely to be confused.

The remaining grounds of opposition were dismissed by the hearing officer as the opponent was unable to support those grounds. With none of the grounds of opposition being established, the application was to proceed to registration.

To read the Office Decision, click here.