opposition case

Hoser v Gatt [2019] ATMO 119

On 2 August 2019, the Australian Trade Marks Office handed down its decision regarding opposition of the STEWY THE SNAKE CATCHER Trade Mark (featuring a cartoon snake) belonging to our client, Stewart Gatt. Gatt is a respected and dedicated snake catcher operating in and around the Western suburbs of Melbourne.

The Opponent, Raymond Hoser, is the owner of a registered Trade Mark (which depicts a photograph of Mr Hoser holding a bundle of snakes), which he claimed to be deceptively similar to the STEWY THE SNAKE CATCHER Logo Mark.

The two Trade Marks are depicted below for comparison.

Applicant’s Trade Mark Opponent’s Trade Mark
(STEWY THE SNAKE CATCHER Logo Mark) (SNAKE CATCHER Logo Mark)
stewy-the-snake-catcher
Stewy the Snake Catcher
snake-catcher
Snake Catcher

The decision was handed down in the Applicant’s favour and all six of the Opponent’s grounds under sections 41, 42(b), 44, 58A, 60 and 62A of the Trade Marks Act 1995 were dismissed.

The decision provides a useful analysis of:

comparison of Trade Marks which incorporate a common descriptive term associated with a particular profession;
whether composite Trade Mark can be treated as “word marks only” in certain situations;
use of covert taped phone conversations as evidence of actual confusion.
The key statements by Hearing Officer Nicholas Barbey are summarised below:

Section 44: Are the Trade Marks Deceptively Similar?

Answer: No!

Hearing Officer Barbey held that Gatt’s STEWY THE SNAKE CATCHER Logo Mark and Hoser’s SNAKE CATCHER Logo Marks were NOT deceptively similar Trade Marks.

In support of this argument, Hoser contended that the composite Trade Marks should effectively be treated as “word marks” only- in other words that only the words in the mark should be considered and not the pictures. The Federal Court decisions in Organic Marketing Australia Pty Ltd v Woolworths Limited and Lift Shop Pty Ltd v Easy Living Home Elevators Pty Ltd were cited by Hoser as apparent authorities for this proposition. The Hearing Officer concluded that neither of those cases constituted persuasive authority for Hoser’s contention and that rather the correct approach for determining deceptive similarity was to compare the Trade Marks as wholes.

The Hearing Officer further found that the term “snake catcher” is descriptive, both in relation to reptile removal services as well as education services provided by a snake catcher. Therefore the use of this common term (being the only common feature of the marks) was attributed less weight when considering whether the marks were deceptively similar.

The pictures featured in both marks were considered to be essential and memorable features of both marks, and a strong basis for consumers to be able to differentiate between the two marks.

The Hearing Officer therefore concluded that the term SNAKE CATCHER is not a term which can be monopolised in the snake catching profession.

Section 60: Was there a likelihood that the STEWY THE SNAKE CATCHER Trade Mark would cause deception or confusion due to Hoser’s claimed reputation in the term “snake catcher”?

Answer: No!

Hoser asserted that he has been known as the “snake catcher” in Australia on a national basis since the 1960s, however no cogent evidence was provided to support this claim.

The evidence produced only showed intermittent use of Hoser’s SNAKE CATCHER Logo Mark and any use of the term “snake catcher” was found to be descriptive rather than Trade Mark use.

Since no reputation in connection with the Trade Mark SNAKE CATCHER was established, this ground was unsuccessful.

Section 42(b): Is use of the STEWY THE SNAKE CATCHER Logo Mark misleading or deceptive?

Answer: No!

Hoser relied on a covert recording between himself and a local council employee (without the council employees knowledge or permission) as evidence of actual confusion between the Trade Marks, which he claimed to be legal recordings under the Surveillance Devices Act 1999 (Vic).

The Hearing Officer did not make an assessment as to the legality of this recording but found that it in any event it had limited probative value in determining whether the caller was or was not confused by use of the STEWY THE SNAKE CATCHER. The reasons (at paragraph 62) for this were:

The date of the recording was unknown;
The caller was not identified;
The caller wasn’t seeking services relevant to the Trade Marks; and
The conversation was monopolised by the Opponent such that the nature of any confusion was not readily apparent.
Further, the Hearing Officer found that no relevant reputation had been established by Hoser against which any confusion could occur.

Accordingly, this ground was not established.

Section 62A: Was STEWY THE SNAKE CATCHER Logo Mark applied for in bad faith?

Answer: No!

Hoser asserted that Gatt was attempting to steal and dilute his SNAKE CATCHER Logo Mark by applying for the STEWY THE SNAKE CATCHER Logo Mark. A copy of a cease and desist letter sent by Hoser to Gatt was produced to support this assertion.

The Hearing Officer found that rather than proving bad faith, the existence of this letter in fact suggested that Gatt had acted in good faith and had even made modifications to his Trade Mark before filing to address concerns made by Hoser regarding infringement of a separate SNAKEMAN Trade Mark.

Accordingly, the bad faith ground was not established.

Section 41: Is STEWY THE SNAKE CATCHER Logo Mark capable of distinguishing Gatt’s services from those of other traders?

Answer: Yes!

Hoser contended that the descriptive term SNAKE CATCHER was the dominant element of the STEWY THE SNAKE CATCHER Logo Mark and that the other additional elements in the mark were inconsequential.

The Hearing Officer found that the mark is obviously a composite mark with multiple word and image elements. When considered as a whole, it was highly unlikely that other traders would legitimately desire to use this specific combination of elements, or something similar to describe their similar services.

Accordingly, the mark was found to be capable of distinguishing Gatt’s services.