Apple Computer Inc. v Gundy Computer Services Pty Ltd

[2008] ATMO 33

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS

Re:Opposition by Apple Computer Inc. to registration of trade mark application 1051114 STATSPOD in Classes 9 and 35 in the name of Gundy Computer Services Pty Ltd.

Delegate:	Debrett Lyons
Representation:	2008 ATMO 33 Opponent:  Michael Hall of Counsel, instructed by Clayton Utz,       solicitors. Applicant:  not represented
Decision:	Section 52 opposition: sections 44 and 60 – trade marks dissimilar – grounds not established; section 59 - no lack of intention to use the trade mark – ground not established. Opposition fails. Costs:  opponent to pay the applicant’s costs

Background

1. Trade mark application 1051114 for STATSPOD was filed on 18 April 2005 (‘the relevant date’) by Gundy Computer Services Pty Ltd (‘the applicant’) and its acceptance for possible registration was advertised on 18 August 2005.  The goods and services currently claimed by the application are set out below:

   Class: 9 Computer hardware; computer software, computer software components, computer software development tools; computer systems, computer applications, computer memories and computer programmes; computer software and systems for the collection of statistics and data; hand held computers and personal digital assistant devices; publications and manuals sold with computer software and computer programmes as a kit; computer software and programmes provided online or downloadable from a global computer network.

   Class: 35 Business services in this class; compiling, collecting, providing and distributing statistical information and data, including providing such information and data online or via a global computer network system; compiling databases including databases of statistical information; market research

2. Apple Computer Inc.(‘the opponent’), lodged Notice of Opposition (‘the Notice”[c1] ) to registration, followed by evidence in support of the opposition being a Statutory Declaration by Thomas La Perle sworn 4 May 2006, with Annexures “A” – “V”.  The applicant then filed evidence in answer, being a Statutory Declaration by Gundars Mantinieks sworn 14 December 2006, with Exhibits “GM-1” – “GM-9”.

3. The matter was heard before me, Debrett Lyons, a delegate of the Registrar of Trade Marks in Canberra on 6 May 2008.  Michael Hall of counsel appeared for the opponent.  The applicant was not represented at the hearing and relied on the written submissions of its attorneys, EKM Patent.

   Grounds of Opposition

4. The Notice lists 9 grounds, some having no specific grounding under the legislation, however at the hearing and in his written submissions, Mr Hall only pressed those grounds dependant upon sections 44, 59 and 60 of the Trade Marks Act 1995 (‘the Act’).

5. I treat the remaining grounds of opposition as having not been established under the terms of section 55 of the Act.

   Discussion

6. I should first consider the section 59 ground of opposition. If the applicant has no intention to use the trade mark on at least some of the goods or services, that finding will have an impact on the section 44 and section 60 discussion.

   Section 59 – no intention to use the trade mark

7. The opponent’s submission was that the evidence does not show an intention to use the trade mark, other than in respect of “computer software and systems for the collection of statistics” (class 9) and “compiling, collecting, providing and distributing statistical information; compiling databases of statistical information” (class 35).  The opponent submitted that the application should be refused in relation to all other claimed goods and services.

8. For clarity, the goods and services which the opponent seeks to excise from the application are highlighted below:

   Class: 9

   Computer hardware; computer software, computer software components, computer software development tools; computer systems, computer applications, computer memories and computer programmes

   ; computer software and systems for the collection of statistics and data; hand held computers and personal digital assistant devices; publications and manuals sold with computer software and computer programmes as a kit; computer software and programmes provided online or downloadable from a global computer network

   
   
   Class: 35

   Business services in this class; compiling, collecting, providing and distributing statistical information and data, including providing such information and data online or via a global computer network system; compiling databases including databases of statistical information; market research

9. Mr Mantinieks is managing director of the applicant.  The applicant trades under the name, Prowess Sports.  Mr Mantinieks declares that the applicant is “an acknowledged leader and innovator in Australia in the sporting industry in the following areas:

   a)     sports statistical collection and reporting

   b)     modular digital video collection and analysis

   c)     recruiting /scouting systems

   d)     specialist coaching tools

   e)     membership systems / registration

   f)     competition management”

10. The product now bearing the trade mark was conceived as a system for the wireless collection of sporting statistics using voice activation technology.  The target market is the professional coach or sports analyst.  The goods on which the trade mark has been used came into existence with the aid of an AusIndustry grant.

11. The opponent’s argument is that these collective facts and statements indicate that the applicant only ever intends to use the trade mark on the narrow range of goods and services set out above.

12. Earlier this year in my decision in Americana International Ltd v Suyen Corporation [2008 ATMO 4] , I summarised case law under section 59 in the following way:

    ·     filing an application for registration raises a prima facie presumption of intention to use in favour of the applicant (Aston v Harlee et. al.);

    ·     that presumption is rebuttable ( Sapient; Danjaq);

    ·     once rebutted, the onus of proof shifts to the applicant (Sapient; Danjaq);

    ·     where, under the Trade Mark Act 1955, a non-use applicant carried the initial onus of proof, case law supported the view that only slight evidence was required to shift the onus to the proprietor of the registration (Estex Clothing);

    ·     a mere allegation of lack of intention to use is not enough by itself to shift the onus (Medley Distilling Co; NSW Lotteries Commission; Torrag);

    ·     inferences can be drawn to indicate a lack of intention to use (Danjaq; Sapient);

    ·      prior or concurrent actions between the same parties can be a source of inference (Phillip Morris; Sapient; Danjaq);

    ·     non-use does not by itself infer lack of intention to use (Aston v Harlee; Torrag);

    ·     failure to respond to an allegation can draw an adverse [c2] inference (Jones v

    Dunkel);

    · under section 59, it is the applicant who is best placed to know its own business and show evidence of intent when it is properly challenged (Danjaq; Wal-Mart Stores).

13. Applying those principles as necessary, I am not convinced that the statements made by Mr Martinieks show the applicant’s lack of intention to use the trade mark on any of the claimed goods or services.  Whilst it is clear that, for now, the trade mark is only being used on a particular product falling within the class 9 specification, there is nothing in Mr Martinieks’ declaration amounting to a positive statement that use will be so contained in the future.  The terms of the AusIndustry grant are not in evidence and the inference that the grant might have somehow placed a fetter on the goods that might be developed by the applicant can not be sustained.  In any case, a purpose limited grant would place no bounds on how the trade mark might be used.  In my opinion , Mr Martinieks’ description of the business activities of the applicant company points quite clearly to the expanded class 9 and class 35 use which might lie ahead for the trade mark.

14. The section 59 ground of opposition is not established.

    Section 44 – earlier rights

15. So much of section 44 as is relevant to this matter is reproduced below:

    44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

    (a) the applicant's trade mark is substantially identical with, or deceptively similar to:

    (i) a trade mark registered by another person in respect of similar goods or closely related services; or

    (ii) a trade mark whose registration in respect of similar goods or closely related services 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 goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

    Note 1:  For deceptively similar see section 10.

    Note 2:  For similar goods see subsection 14(1).
    Note 3:  For priority date see section 12.

    (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.

16. In support of this ground, Mr Hall submitted that the opponent and its parent company, Apple, Inc are the current owners of the following registered trade marks:

17.    Trade Mark No.	18.    Mark	19.    Date of registration
20.    890681	21.    IPOD	22.    2 October 2001 (with convention priority from 31 August 2001)
23.    1028187	24.    IPOD	25.    5 November 2004 (with priority from 24 July 2004)
26.    1072038	27.    IPOD NANO	28.    26 August 2005 (with priority from 24 June 2005)
29.    1074696	30.    IPODCAST	31.    9 September 2005 (with priority from 22  March 2005)
32.    1108460	33.    IPODCAST	34.    13 September 2005 (with priority from 22 March 2005)
35.    1112858	36.	37.    9 February 2006 (with priority from 10 August 2005)
38.    1122315	39.    IPOD HI-FI	40.    16 March 2006 (with priority from 20 September 2005)

1. Registration numbers 1072038, 1112858 and 1122315 have priority dates which postdate the relevant date and I disregard them. Registration number 1108460 also has a priority date which postdates that of the opposed application and, additionally, is not part of the evidence of record. Whilst I note section 210(1) of the Act, its operation does not override the requirements elsewhere in the legislation to properly file and serve evidence in support in opposition proceedings. The opponent pleaded section 44 and it is incumbent on the opponent to put into evidence the details of the trade marks on which it intends to rely. Fairness to the applicant demands that.

2. It was not in dispute that the remaining registrations cover goods and services the same as, similar to, or closely related to, the goods and services covered by the opposed application.

3. Sensibly, the opponent did not claim that the trade marks IPOD or IPODCAST were substantially identical to STATSPOD.  It claims they are deceptively similar.  The applicant argues that they are not.

4. To succeed under section 44 the opponent must establish on the balance of probabilities that the opposed trade mark is deceptively similar to either IPOD or IPODCAST. Section 10 of the Act defines the expression “deceptively similar” - the opposed trade mark must so nearly resemble the earlier trade mark that it is likely to deceive or cause confusion.

5. In Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 French J said of deceptive similarity:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring.  A mere possibility is not sufficient.

   (ii) 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 it might not be the case that the two products or closely related products and services come from the same source.  It is enough if the ordinary person entertains a reasonable doubt.  It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration.  These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark.  The question is not limited to whether a particular use will give rise to deception or confusion.  It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

   "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

6. The assessment of deceptive similarity does not involve a side by side comparison of the trade marks.[1]  Rather, they are to be considered by their look and sound, with due allowance for imperfect recollection in the context of the marketplace for the relevant goods or services.

   [1] Australian Woollen Mills Ltd v F.S. Walton & Co (1937) 58 CLR 641 (at 658); Shell Co of Australia Ltd v Esso Standard Oil (Aust) Ltd (1961) 109 CLR 109 (at 415)

7. Without the need for further analysis, I do not find the resemblance of STATSPOD to IPODCAST is in any way likely to deceive or cause confusion.

8. The residual comparison is of STATSPOD with IPOD and in regard to those two trade marks I make the following preliminary observations:

• The trade marks are both aurally and visually distinct;

• Nevertheless, they have the element POD in common;

• The element POD takes its place as a suffix in both trade marks;

• Mr Mantinieks acknowledges that the element STATS is an abbreviation of the word, statistics.

• The word, statistics, is clearly descriptive of the applicant’s actual goods and has some level of meaning across the breadth of the claimed goods and services.

• The element POD has been registered by third parties in relation to relevant class 9 goods.[2]

  [2] For example, POD (809665), Total Power Systems POD (847888), PODS (937816), TELEPOD (953982), PODEXPRESS (1029884) and bipod (1044485).

1. In Conde Nast Publications  Pty Ltd v  Virginia Taylor [1998] FCA 864, Burchett J. said:

   Sometimes a degree of dissonance between marks in sound and (speaking figuratively) in appearance may be balanced by an identity or close similarity in what has been called the "idea of the mark" - see Jafferjee v Scarlett at 121, per Latham CJ; Johnson & Johnson v Kalnin at 439.

2. Similarly, in John Fitton  & Co. Ltd's Application (1949) 66 RPC 110, the evidence was aimed at:

   …not so much towards showing that the two marks 'Jests' and 'Easyjests' might themselves be confused either visually or orally, as towards establishing that confusion would result, owing to the presence of the common element 'Jest' in each mark, in traders and the public being induced to believe that the two sets of goods sold under the marks emanated from one and the same trade source.

3. The question before me is whether the applicant’s trade mark, being a conjunction of the element POD with another, essentially non-distinctive, component will have that same result.

4. I have already found that the trade marks are not aurally or visually similar and there is authority for the principle that conceptual similarity alone is not enough to cause confusion.[3]  Nonetheless, I am also conscious that several of the decisions cited for that proposition have entailed the comparison of trade marks where one, other, or both have embodied a device element.  Before me are two word marks, but in my opinion word marks which bear so little aural or physical resemblance that they would need to be intimately bound by mental association if they were to be deceptively similar.

   [3] See Shanahan’s Australian Law of Trade Marks and Passing Off, 3^rd ed., Law Book Co., 2003 at para 7.85 generally.

5. I have considered the opponent’s argument that the public would expect to see brand extension of the IPOD trade mark and that STATSPOD would be perceived as an extension of the opponent’s trade mark. To that I say, first, that for the purposes of section 44, the registered trade mark is IPOD, and not POD; second, that the opponent’s other trade marks in evidence comprise, if anything, brand extension of a family of “I” marks[4]; third, the state of the register would suggest to me that the word POD per se has not been monopolised by the opponent; and finally, whatever their etymology, everyday expressions like “podcasting” point to the ways in which the public has come to use the word POD generically. More fundamental however is the fact that arguments of perceived brand extension are proper to section 60, not section 44. It is the reputation of a trade mark which might cause the public to see another trade mark and be potentially deceived, but that reputation, if it exists, must be ignored for the purposes of section 44.[5]

   [4] IMOVIE (823818), iphoto Express (713721), IBOOK (791679), IMAC (852574), ITUNES (867199), IPICTURE (868361), IDVD (872123), ISCHOOL (890365), IPHOTO (899344), ICHAT 929441), IPHONE (930990), ICAL (936630), IWRITE (970169), IMIX (1026733), ILIFE (951841), IMAC (771023), IWORK (1014342), ICALC (1048348), and  iSight (965581).

   [5] CA Hensche & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42

6. Under section 44, all that can be called upon is imperfect recollection. In CA Hensche & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42, the Federal Court said:

   …in assessing the nature of a consumer's imperfect recollection of a mark, the fact that the mark, or perhaps an important element of it, is notoriously so ubiquitous and of such long standing that consumers generally must be taken to be familiar with it and with its use in relation to particular goods or services is a relevant consideration. It is unnecessary to consider whether the cases are authority for precisely that proposition. All that is necessary for present purposes is to hold, as we would, that they are authority for no wider proposition in relation to the relevance, on a question of deceptive similarity in proceedings where it is alleged under s 120(1) that a registered mark has been infringed, of evidence as to the reputation attaching to the mark. A wider proposition would not, in our view, be consistent with the earlier, and binding, authority to which we have referred.

1. I do think that the opponent’s trade mark falls within that special description and so nothing suggests to me that the reputation in the opponent’s trade mark should be a factor determining the likelihood of confusion or deception under section 44. Having regard to my observations on the two trade marks set out above, I can not accept the proposition that there is a real and tangible danger of deception or confusion likely to be occasioned by use of the opposed trade mark, even at the conceptual level discussed in the Conde Nast case.

2. I do not find the opposed trade mark deceptively similar to the opponent’s IPOD trade mark and the section 44 ground is accordingly not established.

   Section 60 – trade mark with a reputation

3. The application was filed before the amendment to section 60 which came into force on 23 October 2007 and thus the pre-amendment version of the section applies.[6] At that time section 60 read:

   The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:

   (a)       it is substantially identical with, or deceptively similar to, a trade mark that, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, had acquired a reputation in Australia; and

   (b)       because of the reputation of that other trade mark the use of the first-mentioned trade mark would be likely to deceive or cause confusion.

   [6] Apple Computer Inc v Todaytech Group Ltd [2007] ATMO 40; Health World Limited v Shin-Sun Australia Pty Ltd [2008] FCA 100 (21 February 2008)

4. Dealing only with the threshold question in paragraph (a) of section 60, I have already found that the opposed trade mark is not deceptively similar to any of the opponent’s registered trade marks and so I reach the only conclusion possible which is that the opponent has not established its section 60 ground of opposition.

Decision

1. Section 55 of the Act provides:

   Unless the proceedings are discontinued or dismissed, 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.

1. The opposition has not been established on any ground.  Accordingly the application may 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.

Costs

1. Both parties made a claim for costs.  As there is nothing before me suggesting that costs should not follow the general rule, I award costs against the opponent in accord with Schedule 8 of the Trade Mark Regulations 1995.

   Debrett Lyons

   Hearing Officer
   Trade Marks Hearings

   20 May 2008

   
   

[c1]Single inverted comma

[c2]Reads a bit oddly