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Apple Computer v TodayTech Group Pty Ltd

Apple Computer v TodayTech Group Pty Ltd

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Case Copied 17 July 2007 34 min read

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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 1054254(9) – MACRON logo - in the name of Todaytech Group Ltd.

Delegate:

Debrett Lyons

Representation:

Opponent: Stephen Burley, of counsel, instructed by Clayton Utz, Solicitors.

Applicant: No appearance but written submissions were filed by Watermark, Patent &Trade Mark Attorneys.

Decision:

2007 ATMO 40

s. 52 opposition – s. 44: not substantially identical or deceptively similar; s.60: to be applied in its unamended form; marks not substantially identical. Acts Interpretation Act (Cth) s. 8: meaning of repeal; how to be applied. Opponent to pay the applicant’s costs.

Background

Trade mark application number 1054254 is in the name of Todaytech Group Ltd (‘the applicant’). It was filed on 9 May, 2005. Details of the application are set out below.
Priority Date:            9 May, 2005
Goods:
Class 9: Computer chassis; notebook computer; notebook computer carry bag; notebook computer accessories; speaker; keyboard; mouse; mouse pad; LCD monitor; plasma screen; mainboard; graphic display card; optical drive; optical media; computer memory; data storage product; smart media; compact flash; memory stick; micro drive; multimedia card; secure digital card; MP3 player; digital camera; camera accessories; TV tuner; computer external enclosure; computer peripherals; computer accessories; AV and home entertainment product; networking device; telecommunication device; electronic device; data cable
Acceptance Advert.:    8 September, 2005
Trade Mark :
(‘the trade mark’)
Apple Computer Inc. (‘the opponent’) filed a Notice of Opposition to registration of the trade mark on 6 December 2005. Thereafter evidence in support and evidence in answer were duly filed and served by the parties according to the provisions in the Trade Mark Regulations 1995 (‘the Regulations’).
Both parties made written submission but it was only the opponent which asked to be heard. The matter was heard by me, Debrett Lyons, a delegate of the Registrar of Trade Marks, on 14 May 2007 in Sydney.
Grounds of Opposition
This is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’).
The Notice of Opposition essentially listed 8 grounds of opposition, resting on sections 41, 42, 43, 44, 58, 59 and 60 of the Act.
The ground of opposition stating that ‘[T]he registration of the Opposed Trade Mark by the Applicant would be prejudicial to the legitimate interests of the Opponent and the Opponent would be aggrieved thereby’ does not correspondent with any ground of opposition in Part 5, Division 2 of the Act and is disregarded.
The Evidence
The evidence filed and served in accordance with the Act and Regulations is set out in the table below.

Declarant

Date Declared

Known As

Annexures

Evidence in Support

John Donald

22 June 2006

Donald

A - K

Evidence in Answer

Philip Cribb

28 September 2006

Cribb

PC1 – PC13

Submissions and Reasoning

At the Hearing, the opponent stated that the opposition was confined to the grounds under sections 42(b), 43, 44 and 60 of the Act.
The opponent’s substantive submissions…

Grounds of appeal

[14] The appellant contends that the primary judge erred in finding that the respondent had discharged the onus of establishing the matters required under the relevant provision.

[15] It was submitted that his Honour failed to give adequate weight to the evidence of the second witness, and that the findings of fact were not reasonably open on the material before the Court.

[16] The respondent, for its part, submits that no error is disclosed, and that the conclusions reached were well within the range of outcomes available to the primary judge.

Consideration

[17] It is convenient to deal first with the question of construction, as the resolution of that issue informs the remaining grounds advanced by the appellant.

[18] For the reasons that follow, we are of the view that the appeal should be allowed in part and the matter remitted for further determination.

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Details

Case: [2007] ATMO 40
Decision Date: 17 July 2007

CaseChat Overview and Summary

This matter concerned an opposition by TodayTech Group Pty Ltd (the opponent) to an application by Apple Computer (the applicant) for registration of a trade mark. The opposition was heard by Debrett Lyons, a Hearing Officer in the Trade Marks Hearings.

The primary legal issues before the Hearing Officer were whether the applicant's trade mark should be rejected under section 44 of the *Trade Marks Act 1995* (Cth) due to its substantial identity or deceptive similarity to registered trade marks owned by the opponent, and whether the opposition should succeed under section 60 of the Act. The opponent also initially raised grounds under sections 42(b) and 43, but these were not pursued in substantive submissions.

The Hearing Officer considered the requirements for an opposition under section 44(1), which necessitate proof of a registered or pending mark with an earlier priority date, and that the applicant's mark is substantially identical or deceptively similar to that other mark in relation to similar goods or closely related services. The opponent relied on its registrations for MACINTOSH and MAC. The Hearing Officer found that the opponent's registrations pre-dated the applicant's priority date. However, after examining the evidence and submissions, the Hearing Officer concluded that the ground under section 44 failed, as did the ground under section 60, finding that the opponent had not established the necessary elements for either.

Consequently, the opposition was dismissed. The Hearing Officer directed that the application for registration proceed, subject to payment of the sealing fee and any orders made in the event of an appeal. The opponent was ordered to pay the applicant's costs.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

The ground of opposition stating that ‘[T]he registration of the Opposed Trade Mark by the Applicant would be prejudicial to the legitimate interests of the Opponent and the Opponent would be aggrieved thereby’ does not correspondent with any ground of opposition in Part 5, Division 2 of the Act and is disregarded.The Evidence The evidence filed and served in accordance with the Act and Regulations is set out in the table below. At the Hearing, the opponent stated that the opposition was confined to the grounds under sections 42(b), 43, 44 and 60 of the Act. The opponent’s substantive submissions were directed towards sections 44 and 60 of the Act and so for that reason I will examine them first.Section 44 Section 44 states:Identical etc. trade marks (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). The opponent’s arguments focused on sub-section (1). In order to establish an opposition under this ground the opponent has the burden of proving: a mark, either registered or pending registration, in the name of a person other than the applicant, and in relation to which the applied-for trade mark is either substantially identical or deceptively similar; that other mark must be in respect of similar goods or closely related services; and, the priority date of the other mark must be earlier than the priority date of the applied-for trade mark. The opponent is the registered proprietor of many trade mark registrations but for the purposes of section 44(1) the opponent relied on trade mark registration numbers 422737 for MACINTOSH and 457403 for MAC (‘the registrations’), details of which are set out in the following table. For convenience, that table also shows the way in which the goods of the registrations overlap with the goods of the application: The registrations pre-date the priority date of the application. The expression ‘deceptively similar’ is defined in section 10 of the Act as:Definition of deceptively similar10. For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion. The expression, ‘similar goods’ is defined in sub-section 14(1) of the Act as:Definition of similar goods and similar services14. (1) For the purposes of this Act, goods are similar to other goods:(a) if they are the same as the other goods; or(b) if they are of the same description as that of the other goods.

Decision

Reasons for decision

A ‘connotation’ is a meaning or representation inherent in the trade mark itself which would be likely to deceive or cause confusion. From what I have already decided, I am unwilling to draw that conclusion. The ground fails.Decision Under section 55 of the Act, I decide that the opposition fails and so I direct that the application be registered one month from the date of this decision, provided that the sealing fee has been paid. 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 discontinued, or in the event of a decision from the Court, that the application be subject to its orders.Costs Both parties requested their costs in the matter. The opposition having failed, I order that the opponent pay the applicant’s costs according to the official scale.Debrett LyonsHearing OfficerTrade Marks Hearings18 July 2007AppendixAn Act to amend the Trade Marks Act 1995, and for related purposes [Assented to 23 October 2006]The Parliament of Australia enacts:1 Short titleThis Act may be cited as the Trade Marks Amendment Act 2006.2 Commencement(1) Each provision of this Act specified in column 1 of the table commences, or is taken to have commenced, in accordance with column 2 of the table. Any other statement in column 2 has effect according to its terms.

Ratio Decidendi

Legal Principle Established

Full text does not contain this section.

Declarant	Date Declared	Known As	Annexures
Evidence in Support
John Donald	22 June 2006	Donald	A - K
Evidence in Answer
Philip Cribb	28 September 2006	Cribb	PC1 – PC13