Apple Computer v TodayTech Group Pty Ltd

[2007] ATMO 40

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

1. 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’)

2. 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’).

3. 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

4. This is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’). 

5. The Notice of Opposition essentially listed 8 grounds of opposition, resting on sections 41, 42, 43, 44, 58, 59 and 60 of the Act.

6. 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

7. 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

1. 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.

2. 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

3. 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).

4. 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.

5. 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:

Registration and priority date	Goods of the registration	Overlap with the application
No. 422737 MACINTOSH 22 February 1985	Class 9: Computer equipment including computer peripheral equipment and parts, fittings and ancillary equipment included in class 9 for all aforesaid goods; computer software.	Class 9: Computer chassis; notebook computer; notebook computer carry bag; notebook computer accessories; keyboard; mouse; mouse pad; LCD monitor; plasma screen; mainboard; graphic display card; optical drive; computer memory; data storage product; smart media; computer flash; memory stick; micro drive; multimedia card; secure digital card; computer external enclosure; computer peripherals; computer accessories; networking device; telecommunication device; electronic device; data cable.
No.457403      MAC 18 December 1986	As above.	As above.

1. The registrations pre-date the priority date of the application.

2. The expression ‘deceptively similar’ is defined in section 10 of the Act as:

   Definition of deceptively similar

   10. 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.

3. The expression, ‘similar goods’ is defined in sub-section 14(1) of the Act as:

   Definition of similar goods and similar services

   14. (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.

4. I also note the comments of French J (with agreement from Tamberlin J) in Registrarof Trade Marks v Woolworths Limited, 45 IPR 411, at paragraph 39:

   The logic of s 44(2) suggests that the determination whether goods are closely related to the services in question is logically antecedent to the determination whether the trade mark in respect of the services is deceptively similar to that in respect of the goods.

5. By analogy, I am to consider the issue of the similarity of the respective goods before I turn to the similarity of the respective trade marks. The principles for comparison of similarity of goods are well established in cases such as Jellinek's Application (1946) 63 RPC 59; John Crowther & Sons (Milnsbridge) Limited'sApplication (1948) 65 RPC 369; Reckitt & Colman (Australia) Limited v Boden (1945) 70 CLR 84 and Southern Cross Refrigerating Co v Toowoomba Foundry PtyLimited (1954) 91 CLR 592; 1A IPR 465. In short, these authorities establish that there are three principal factors to be considered when comparing goods of respective parties to determine if they are of ‘the same description’. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and, (3) the trade channels through which the goods are bought and sold.

6. Clearly, the goods of the application are of the same description, if not in many instances identical, to the goods covered by the registrations.

7. I return, then, to the question the similarity of the trade marks themselves.  The opponent did not seek to convince me that the trade marks were substantially identical. The opponent did however have much to say on the issue of their alleged deceptive similarity.

8. The test for deceptively similar trade marks was succinctly put by Windeyer J. in Shell Co. (Aust) Ltd  v Esso Standard Oil (Aust) Ltd, (1961) 109 CLR 407 at 415 in these words:

   On the question of deceptive similarity a different comparison must be made from that which is necessary when substantial identity is in question. The marks are not now to be looked at side by side. The issue is not abstract similarity, but deceptive similarity.

9. I recall, too, what French J. had to say in Registrar of Trade Marks v Woolworths Limited, 45 IPR 411, at 425:

   In the end there is one practical judgment to be made. Whether any resemblance between different trade marks for goods and services renders them deceptively similar will depend upon the nature and degree of that resemblance and the closeness of the relationship between the services and the goods in question. It will not always be necessary to dissect that judgment into discrete and independent conclusions about the resemblance of marks and the relationship of goods and services. Consistently with that proposition, the Registrar or a judge on appeal from the Registrar could determine in a particular case that, given the limited degree of resemblance between the relevant marks he or she could not be satisfied, no matter how closely related the goods and services concerned, that the use of the applicant’s marks would be likely to deceive or to cause confusion.

10. The opponent submitted that there are clear visual and aural similarities between the trade mark and the registrations. It asserted that the dominant feature of the MACINTOSH and MAC trade marks is the letters MAC.  When pronounced, the trade mark MACRON has two syllables, MAC and RON, with the emphasis falling on the first and the sound falling away on the second. The opponent therefore claimed that the dominant feature of the trade mark under application is also the letters MAC.

11. In its written submissions, the applicant pointed to the stylisation of the trade mark which helps visually characterise it and to the fact that the trade mark has a dictionary meaning, being the name for the short horizontal line used as a diacritic over a vowel to indicate that the vowel has a ‘long’ sound, another factor helping to distinguish it from the registrations.

12. The opponent asked me to accept the argument that its reputation in its MACINTOSH and MAC trade marks is so formidable that any use of MAC in the initial part of a word mark is likely to be perceived by consumers as bringing to mind the opponent and its goods; see NEC Corporation v Punch Video(S) Pte Ltd (2005) 67 IPR 17; McDonalds Corporation v Bellamy (2004) 62 IPR 133; Accentuation Pty Ltd v Accenture Global Services Gmbh (2004) 62 IPR 432.

13. It is fair to say that the law is not settled on the question of how far the reputation of the opponent’s marks is a factor that is to be properly considered for the purposes of section 44 of the Act. However I do not find that the cases referred to by the opponent help me reach a decision in this case. In the Accentuation case the marks under comparison were ACCENTURE and ACCENTUATION, two clearly similar marks leaving aside all other factors. In the McDonalds case the evidence showed that the opponent had a reputation in trade marks consisting of the prefixes ‘Mac’ and ‘Mc’ followed by a descriptive word, a situation not paralleled to the facts of this case. Finally, in the NEC case, the trade mark NECVOX was held to be deceptively similar to NEC because the word ‘vox’ was found to be sufficiently recognized by the public as a word meaning voice or sound so to be non-distinctive in relation to the goods there, being audio-visual equipment.  Again, that is not the situation here where there is no evidence that the element ‘ron’ has a dictionary meaning, but evidence that the trade mark, as a whole, does have a meaning and one which is arbitrary having regard to the goods.

14. For my part, I struggle to accept that a significant section of the relevant public would perceive the trade mark as being associated with the opponent in some way. There is abundant evidence that both parties are using their trade marks but there was no evidence of actual confusion.  I believe that for the most part the Australian public would perceive the applicant’s mark as a single, perhaps invented, word and would not stop to discern a distinct element MAC and so be caused to wonder whether the trade mark might be connected with the opponent.

15. I do not say that there might not be some members of the relevant purchasing public who could wonder whether there is a connection between the trade mark and the opponent’s business, however the opponent bore the onus of proving that deception or confusion was more likely than not and on the balance of probability and I do not find that it has discharged that onus. 

16. For these reasons, I hold that the trade mark is not deceptively similar to the marks of the registrations. Accordingly, the ground of opposition based on section 44 of the Act fails.

    Section 60

17. Section 60, in its unamended form and as it stood both at the filing date of the application and at the date of filing of the Notice of Opposition, stated:

    Trade mark similar to trade mark that has acquired a reputation in Australia

    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.

18. It is for the opponent to point to a trade mark, whether registered or in common law use, which:

    • is either substantially identical with, or deceptively similar to, the trade mark in the application

    ·before the priority date, had acquired a reputation in Australia such that

    • use of the applicant’s trade mark would lead to deception or confusion.

19. I have already found that the trade mark is not deceptively similar to the marks of the registrations and so this ground of opposition should fail. However the opponent submits that the correct provision to apply is section 60 as currently worded and which is set out below:

    Trade mark similar to trade mark that has acquired a reputation in Australia

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

    (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

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

20. Sub-paragraph (a) of section 60 was amended by the Trade Marks Amendment Act 2006 (‘the Amendment Act’). The alteration was made by Item 31 of Part 1 of Schedule 1 of the Amendment Act. Schedule 1, Part 1 amendments are stated to commence on the date of Royal Assent, which was 23 October 2006, however a number of Schedule 1, Part 1 amendments carry ‘Application’ and other qualifying provisions which state how the amendment will operate. The amendment to section 60 is not subject to a provision of this kind, and so it is submitted by the opponent that the intention of the Amendment Act is that the new section 60 should take effect from the date of Royal Assent and should govern this opposition. At the hearing, both parties made submissions on this issue. In principle, it would have been open to the opponent to have requested amendment to bring the notice of opposition into line with what the opponent argued was the relevant law. Therefore, for the benefit of the parties, and of others contemplating this question, I will deal with the possible relevance of the amendment of the legislation.

    Acts Interpretation Act 1901

21. The opponent’s argument does not take account of the Acts Interpretation Act 1901 (‘AIA’). If the opponent is correct, the amendment of section 60 would have a retroactive impact on trade mark applications already filed by 23 October 2006. The AIA regulates the impact of legislative changes, amongst other things.

22. Section 8 of the AIA provides:

    Effect of repeal

    Where an Act repeals in the whole or in part a former Act, then unless the contrary intention appears the repeal shall not:

    (a) revive anything not in force or existing at the time at which the repeal takes effect; or

    (b) affect the previous operation of any Act so repealed, or anything duly done or suffered under any Act so repealed; or

    (c) affect any right privilege obligation or liability acquired accrued or incurred under any Act so repealed; or

    (d) affect any penalty forfeiture or punishment incurred in respect of any offence committed against any Act so repealed; or

    (e) affect any investigation legal proceeding or remedy in respect of any such right privilege obligation liability penalty forfeiture or punishment as aforesaid;

    and any such investigation legal proceeding or remedy may be instituted continued or enforced, and any such penalty forfeiture or punishment may be imposed, as if the repealing Act had not been passed.

23. There are three enquiries before me. First, was section 60 repealed by the Amendment Act? Secondly, did the change affect any right or privilege acquired or accrued under the Act? Thirdly, does the Amendment Act manifest a contrary intention so as to displace the AIA?

Was section 60 repealed?

1. Item 31 of the Amendment Act stated:

   31 Paragraph 60(a)

   Repeal the paragraph, substitute:

   (a) another trade mark had, before the priority date for the registration of the first-mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and

2. On its face, section 60(a) was repealed and a new provision substituted, however the following is an extract from Thompson’s The Laws of Australia (TLA [25.1.36]):

   There is a distinction between an amendment of an Act on the one hand, and a repeal and re-enactment of provisions of that Act, on the other. Where a provision of an Act is repealed or omitted and re-enacted in a form which enlarges its scope, this is construed as amounting in substance to an amendment because the new provision has been regarded as intended to be retrospective so far as it is mere repetition, and prospective so far as it is new. Where a provision is re-enacted in a form which restricts its scope then there is, generally speaking, a repeal. While this distinction clearly exists as a technical matter, doubts have been expressed as to whether it really has any continuing substance in the absence of statutory provisions that themselves distinguish between amendments and repeals.

   An Act which has been amended is operative in its unamended form to regulate matters which have occurred up to the time when the amendment comes into effect; and then becomes operative in its amended form. Substantive rights which have come into existence under the Act before its amendment are not affected by the amendment, but are enforceable as though the Act had not been amended.’

3. The change to section 60 has, in a sense, enlarged its scope since it is no longer necessary for the applied-for mark to be substantially identical with, or deceptively similar to, a trade mark with a prior reputation.  This passage might therefore suggest that the change to section 60 is properly to be considered an amendment, rather than repeal, of the section.

1. Nevertheless, the authoritative statement of the law in this respect is to be found in the case of Mathieson v Burton (1971) 124 CLR 1, where the High Court explained:

   This case turns upon the effect of the Landlord and Tenant(Amendment) Act, 1968 (N.S.W.) - one of a series of complicated enactments that, beginning in 1948, have, in various ways and from time to time, amended the tenancy law of New South Wales. And this is another instance of legislatures amending statute law without expressly either saving or abrogating the consequences of prior events. Today draftsmen do not ordinarily insert saving clauses in bills. When a statute repeals an earlier enactment, the general provisions of the Interpretation Acts are assumed to be sufficient to limit the operation of the new Act and to prevent the disturbance of past transactions and accrued rights. Yet this parliamentary parsimony can create problems, costly for citizens and troublesome for courts. … … We are not here to give lessons to legislators as to the words they might have used, but to spell out, as best we can, the intention expressed by the words that they have used.

   Section 83A was a new section added, by Act No. 55 of 1952 s. 3 (e), to the statute governing the relations of landlord and tenant. It was amended in 1964, to enlarge the classes of persons entitled to its benefits, and in other ways. These amendments did not touch the respondent. But in 1968 came a further amendment, dictated by a new policy. This time the persons who could claim the benefit of the section were not increased. They were reduced. The respondent does not come within the restricted class of children of a deceased lessee who, since 1968, are entitled to the like right that he would have had if he had lived. Did this 1968 amending Act destroy or disturb rights created by s. 83A (1) as it had previously stood, and which were still subsisting on 13th December 1968, when the new Act came into force? I think not. The question is one of statutory construction and of the effect of the Interpretation Act of 1897 (N.S.W.). As I regard the Interpretation Act s. 8 as the firm base from which I proceed, I shall turn first to it. So far as immediately relevant it is as follows:

   8.  Where an Act repeals in the whole or in part a former Act, then, unless the contrary intention appears, the repeal shall not –

   (a) affect the previous operation of an enactment so repealed, or anything duly suffered, done, or commenced to be done under an enactment so repealed; or

   (b) affect any right, privilege, obligation, or liability acquired, accrued, or incurred under an enactment so repealed.

   It was contended for the appellant that these provisions were not applicable, because, it was said, the alteration that the 1968 Act made in s. 83A (1) par.(b) - the paragraph under which the respondent acquired the right she relies upon - was not covered by the introductory words of s. 8 "where an Act repeals in the whole or in part a former Act". It was said that the 1968 Act effected an amendment not a repeal. I cannot accept that proposition or the distinction supposed. The words "an Act which repeals in the whole or in part a former Act" in s. 8 of the New South Wales Interpretation Act have, in my view, the same effect as that which in the United Kingdom Interpretation Act, 1889, s. 38 (2) is expressed by the words "where any Act repeals any other enactment". English cases are thus in point. That is because an enactment may mean either a statute as a whole or any provision of a statute. Every section of an Act takes effect as a substantive enactment. Interpretation Acts commonly so provide. In New South Wales it has been so since 1852: Acts Shortening Act, 16 Vict. No. 1. And, as I understand it, if an enactment radically alters the effect of an earlier enactment so that the two cannot stand together, it amounts to a repeal by implication of that earlier enactment. In Victoria the Acts Interpretation Act 1958 does not - in s. 7 (2), corresponding to s. 8 of the New South Wales Act - speak of an "Act which repeals in the whole or in part any other Act". Its words are "where any Act repeals or amends any other enactment". This difference of verbiage is interesting, but in my opinion is not significant. It cannot, I think, be invoked to support a notion that s. 8 of the New South Wales Interpretation Act and s. 8 of the Acts Interpretation Act 1901-1966 (Cth) - which are in the same terms - apply only to express repeals and not to implied repeals resulting from amendments. For some purposes it may sometimes be relevant to distinguish between a repeal and an amendment, or a modification, as the latter is sometimes called. But an amendment which permanently reduces the ambit of any of the provisions of an Act involves a repeal of it in part.

   … ....

   What counts in determining whether an enactment involves a repeal of earlier legislation is the substantial effect it produces, not the linguistic method by which it produces it. Expressly to omit the old and insert the new is one manner of amendment. But the same result may flow from other legislative forms; for old provisions must always be in effect removed if they are to make room for new. In the present case the alteration in 1968 of par. (b) of s. 83A (1) was accomplished by simply adding words to the existing provision. But this radically changed its effect. The former paragraph was in the result displaced by a new and different provision.

   … …

   Of course if the effect of an amendment be only to extend the duration of an Act was that due to expire, or to extend the territorial locality in which it should operate, or to add to the persons who might claim its benefits or become subject to its obligations, then, in one sense, no repeal is involved. The Act's existing operation in respect of time, place and people is enlarged, not curtailed. It is simply extended for further time, to a new place, or in respect of new people, without its previous effect being in any way abrogated. For that reason Jordan C.J. said that an enlarging amendment of that sort was not a repeal : see Beaumont v. Yeomans (1934) 34 SR (NSW) 562, at pp 569-570. In Ex parte Barker ; Re Luckett (1946) 46 SR (NSW) 235, at p 237 his Honour said of an amendment, thus distinguished from a repeal, that "it adds something, but subtracts nothing". That is a convenient distinction, although in a philosophical sense any addition to the operation of a statute making it applicable to new persons, new places or at further times involves an alteration of its previous limits ; and is thus a repeal of provisions that were implicit. For example, the continuance of a temporary Act involves an abrogation of an implied stipulation that it was not to operate beyond a date certain. Nevertheless, alterations in the nature of extensions are not usually called repeals. They leave previous obligations and rights unaffected without the aid of any saving clause or Interpretation Act. But the amendment of s. 83A (1) (b) that was made in 1968 by the addition of words to that paragraph gave it thereafter a lesser, not a greater, denotation; and that meant that its earlier wider denotation was pro tanto repealed. To adopt and adapt the phrase used by Jordan C.J. that I have quoted : The scope of the Act had been reduced by a subtraction, not enlarged by addition ( per Windeyer J.)

2. Mathieson v Burton suggests that the alteration to section 60 was indeed a repeal.  The opponent sought to convince me that, in quantitative terms, there was very little difference in the section as it stood before and after the change but, as reasoned above, what counts in determining whether an enactment involves a repeal of earlier legislation is the substantial effect it produces, not the linguistic method which  produces it.

3. Mathieson v Burton also makes it clear that ‘enlargement’ as it might be understood from the passage in The Laws of Australia above is not the type of enlargement that happened to section 60. The changes were not concerned with the place or people coming under the section, nor with the timing of its operation. The section was not otherwise enlarged by ‘adding something, but subtracting nothing’. Instead, it is to be remembered that section 60 is a provision concerned with opposition to registration of a trade mark. It is about limiting or taking away rights of an applicant. In that context, the changes to section 60 brought about by the Amendment Act permanently reduced the ambit of a trade mark applicant’s rights. The section 60 ground of opposition became broader and so something very identifiable was subtracted from those rights.

4. On my reading of this case, I find that the Amendment Act entailed repeal of section 60 within the meaning of section 8 of the AIA.

5. In reaching this conclusion I am also conscious of the legislative intention behind the change to section 60. In this regard, section 15AA of the AIA states:

   Regard to be had to purpose or object of Act

   (1) In the interpretation of a provision of an Act, a construction that would promote the purpose or object underlying the Act (whether that purpose or object is expressly stated in the Act or not) shall be preferred to a construction that would not promote that purpose or object.

6. The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 states that the intention of the change to section 60:

   ... is to implement Australia's obligations to protect well-known marks under the Paris Convention for the Protection of Intellectual Property and the 1994 World Trade Organisation Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS). … … Under the current arrangements the provisions of section 60 require that the applied-for mark be substantially identical with, or deceptively similar to, the trade mark forming the basis of opposition before consideration of any deception or confusion, resulting from the reputation of the opponent's trade mark, can take place. Substantial identity and deceptive similarity are tests undertaken in examination of an application before the opposition process, and have very well established scope. There have been a number of instances where a trade mark has an established reputation in Australia, and use of a subsequently applied-for trade mark would deceive or cause confusion, even though the subsequent trade mark is not substantially identical with, or deceptively similar to the original trade mark. However, because of the way paragraph 60(a) of the Act is written it is not possible to currently use this provision to prevent registration of a mark which fails the tests for substantial identity or deceptive similarity, but which nevertheless will cause confusion or deception in relation to a well-known mark. … … By removing the requirement for substantial identity or deceptive similarity from section 60, the ground for opposition under section 60 can be used to oppose the registration of a trade mark because of the possible deception or confusion arising solely from the reputation of a trade mark.

7. The changes to section 60 were therefore made to satisfy Australia’s treaty obligations and as part of a programme to substantially alter the impact of the provision. The gravity of those intentions also points in my view to the change being properly characterized as a repeal rather than an amendment of the section.

Did the change affect any right or privilege acquired or accrued under the Act?

1. The question is whether, in terms of section 8(c) of the AIA, the repeal had any impact on a right or privilege already acquired or accrued under the Act. Again, the case of Mathieson v Burton is instructive:

   The appellant's next proposition was that, assuming s. 8 of the Interpretation Act to be applicable, yet the respondent got nothing by it as, it was said, the consequences for her that had resulted from s. 83A (1) (b) as it formerly stood were not a "right" or "privilege" "acquired or accrued" within the meaning of s. 8. I thought this proposition startling. We are not engaged in an exercise in analytical jurisprudence, or with the classification, expressed in terms of correlatives and opposites, that delights and attracts both disciples and critics to Hohfeld. It was said that s. 83A (1) created immunities not rights. But I fail to see why an immunity, or exemption from legal consequences, should not be called a right or privilege once it has taken effect and is not merely inchoate.

2. In matters under the Act, the ‘right’ spoken of must include the right or privilege of a trade mark applicant to have its application dealt with by the law as it stood at the time the trade mark application was filed. That is an accrued right. It must include the right to find the grounds of opposition to be as they were at the filing date, certainly not of wider ambit.

3. Therefore, I find that the repeal of section 60 did have the capacity to affect rights or privileges that the applicant had acquired and, but for a contrary intention in the Amendment Act, the impact of section 8(c) of the AIA is to preserve those rights and privileges.

Does the Amendment Act manifest a contrary intention so as to displace the AIA?

1. The opponent accepts that there must, in the repealing legislation, be a clear indication of an intention to be exhaustive before the operation of section 8 of the AIA is excluded.

2. In Donovan v Repatriation Commission (1985) 58 ALR 634 at 639–40, Toohey J. said:

   In the course of an examination of the provision made by s 5 of the Trade Marks Act 1955 with respect to applications under the repealed Act of 1905-1948 pending when the 1955 Act came into operation, the High Court (Dixon CJ, Taylor and Windeyer JJ) said in G F Heublein & Bro Inc v Continental Liqueurs Ply Ltd (1962) 109 CLR 153 at 161-2: "Close consideration of the special provisions of s 5 induces us to think that the express provision which it makes with respect to applications pending under the earlier Act must be read as exhaustive and that there is, therefore, no room for the application of s 8 of the Acts Interpretation Act, even if it were otherwise possible to bring the case within its terms."

   That decision was referred to by Blackburn J in Agua Marga Pty Ltd v Minister of State for Interior (1973) 22 FLR 136, which was concerned with s 38 of the Interpretation Ordinance 1967 of the Australian Capital Territory, a provision similar to s 8 of the Acts Interpretation Act. His Honour referred to Heublein and held that, in the case before him, "the intention to exclude the operation of s 38 is shown by the provision for the continued application of the old law to the defined field; a provision to which I think the maxim expressum facit cessare taciturn must apply. This result is the opposite of that reached in the Heublein's case. There the matter in question was caught by the special saving provisions; here, in my opinion, it falls outside them. But I accept that case, with respect, as a demonstration that the effect of general saving provisions may be excluded by an intention which appears in the special saving provisions by implication and not by expression" (at p 148).

   Heublein was also referred to by Zelling J in Karounos v Flavel (1984) 245 ACLC 394 at 402, where his Honour was concerned with s 16 of the Acts Interpretation Act 1915 of South Australia, again a provision comparableto s 8 of the Acts Interpretation Act of the Commonwealth. At p 402 his Honour said: "However I agree with the defendant that s 16 of the Acts Interpretation Act has no application. To my mind the comprehensive scheme for the transition of the Companies Code indicates that it is intended to cover the field. Accordingly, it shows that s 16 of the Acts Interpretation Act is impliedly ousted. G F Heublein & Bro Inc v Continental Liqueurs Pty Ltd (1962) l09 CLR 153 supports the proposition that where express provision is made for transition it ought to be regarded as exhaustive.

3. Whether or not a contrary intention appears from the legislation involves construing the legislation in light of its surrounding statutory provisions: see BHP Direct Reduced Iron Pty Ltd v Chief Executive Officer, Australian Customs Service (1998) 55 ALD 665 at 695; Boral Windows v Industry Research & Development Board (1998) 98 ATC 4,479.

4. As noted previously, amendment of section 60 was made by Items 31 and 32 of Schedule 1, Part 1 of the Amendment Act. Amendments under Schedule 1 were stated to commence on Royal Assent (23 October 2006). Some of the amendments made to the Act in Schedule 1 of the Amendment Act carry ‘Transitional’ or ‘Application’ or ‘Application and saving’ provisions. No such provisions appear in connection with Items 31 and 32.

5. It is submitted by the opponent that the exclusion of an application, saving or transitional provision in relation to Items 31 and 32 shows an objective parliamentary intention to give effect to section 2 of the Amendment Act from the date of commencement and displays the requisite contrary intention to exclude the operation of section 8 of the AIA. (see the Appendix to this decision for details of the commencement framework for the Amendment Act).

6. In my search for Parliament’s intention, there is nothing in the ‘Outline’ to the Explanatory Memorandum which guides me.  It is instructive however to examine amendment Items which do carry ‘application’ provisions. Items 33 and 34 as they apply to section 61(1)(b) provide an example.  Those Items state:

   33  Paragraph 61(1)(b)

   Repeal the paragraph, substitute:

   (b) a region or locality in the country in which the relevant goods originated other than the region or locality in which the relevant goods originated;

   if the relevant goods are similar to the designated goods or the use of a trade mark in respect of the relevant goods would be likely to deceive or cause confusion.

   34  Application

   The amendment made by item 33 applies to:

   (a) applications for registration of trade marks made after the commencement of this item; and

   (b) applications for registration of trade marks pending but not accepted at that commencement.

7. Paragraph 4.11.1 of the Explanatory Memorandum states that ‘this item adds a qualification to subsection 61(1) so that it is only possible to oppose a trade mark containing a geographical indication where the goods specified by the trade mark are similar to those covered by the geographical indication or would otherwise be likely to deceive or cause confusion.’

8. In terms of the analysis in paragraphs 36 to 42 of this decision, that ‘amendment’ reduces the scope of the ground of opposition and has less potential for impact on a trade mark applicant’s rights than did the provision prior to amendment. The Application provision in Item 34 might then be said to provide a contrary intention to how the AIA might otherwise have operated, that is, adversely to an applicant’s interests by preserving the opposition provision in its unamended, broader, form.

9. To take another example, a quite different amendment to the Act is brought about by Items 35 and 36:

   35 At the end of Division 2 of Part 5

   Add:

   62A  Application made in bad faith

   The registration of a trade mark may be opposed on the ground that the application was made in bad faith.

   36  Application

   The amendment made by item 35 applies to:

   (a) applications for registration of trade marks made after the commencement of this item; and

   (b) applications for registration of trade marks pending but not accepted at that commencement.

10. The Application provision is in identical terms to the previous example however the amendment itself introduces into the Act a hitherto non-existent ground of opposition. The addition of a new ground of opposition must be akin to the widening of an existing ground of opposition such as that created by the Items 31 and 32. Why then, I postulate the opponent would ask, does an Application provision attach to the one but not the other?

11. My answer is that if we examine the substance of new section 62A of the Act, it places no greater obligation on a trade mark applicant than was already imposed by section 27(1)(a) of the Act, that is, in both cases to have filed its application in good faith. Accordingly, there is no inconsistency that the new section might apply to pending application for registration.

1. Finally, if we look to the amendment introduced by Items 3 and 4 of the Amendment Act (below) we can see that the potential effect of the AIA is clearly within the contemplation of the legislative draftsman.

   4  After section 6

   Insert:

   6A  Periods expressed in months

   For the purposes of this Act, a period expressed in months and dating from an event ends:

   (a) on the day, in the relevant subsequent month, which has the same number as the day of the event; or

   (b) if the relevant subsequent month has no day with the same number--on the last day of the month.

   Note: This provision displaces section 36 of the Acts Interpretation Act 1901, and is in accordance with the Madrid Protocol. The difference between the two occurs when the initiating event is on the last day of a calendar month, which has fewer days than the month in which the period ends. For example, a period of 3 months from an event on 30 September ends on 30 December under this rule; it would end on 31 December under the Acts Interpretation Act 1901 provision.

   5  Application

   The amendments made by items 3 and 4 apply to:

   (a) periods starting after the day on which this Act receives the Royal Assent; and

   (b) periods that started on or before that day and that have not ended by that   day.

2. I would deduce from this final example that the existence or not of ‘Application’ provisions has been consciously arranged with the unwritten authority of the AIA in mind. The legislative intention, as I see it, is to use the mechanism of ‘Application’ provisions to either modify how the AIA would otherwise operative, or simply provide clarity. Where no provision is included, I understand that the AIA would operate in the normal manner. I can perceive of no design which indicates a contrary intention that section 8 of the AIA should not apply to Items 31 and 32 of the Amendment Act. Contrary to the position described in the Donovan case where it was said that that the effect of general saving provisions may be excluded by an intention which appears in the special saving provisions by implication, I find here the exact opposite situation in that the special saving provisions are implied exceptions to how the general saving provisions would else wise operate.

3. With those enquiries closed, it remains only for me to restate that the law to be applied in this opposition was section 60 as it stood in its unamended form and given my finding that the trade mark is not deceptively similar to the marks of the registrations, I determine that the section 60 ground of opposition fails.

   Section 42

   Trade mark scandalous or its use contrary to law

   42. An application for the registration of a trade mark must be rejected if:

   (a) ….

   (b) its use would be contrary to law.

4. Section 42(b) requires the opponent to prove that use of the trade mark would to contrary to a specific law (Advantage Rent-A-Car Inc v Advantage Rental Pty Ltd (2001) 52 IPR 24). In this case the claim is that use of the trade mark would contravene sections 52 or 53 of the Trade Practices Act1974.

5. To succeed, the opponent would need to show the requisite likelihood of confusion as a result of its reputation in either the marks of the registrations, or in MAC- prefixed marks generally, registered or not.

6. Even allowing for the opponent’s reputation in its MAC and MACINTOSH marks, I do not accept, for the reasons set out already, that the applicant’s use of the trade mark would mislead consumers.  Annexure G of the Donald declaration shows that the opponent uses marks such as ‘MacWrite’, ‘MacPaint’, ‘MacDraw’, ‘MacTerminal’ and  ‘MacProject’, but again I can not accept that even the widespread use of these terms which, by the use of initial capitalization, so obviously append a descriptive word to the ‘Mac’ element, would create the environment where consumers of the relevant goods would be likely to be misled or deceived about the provenance of the same kind of goods which bore the applicant’s trade mark.  There is no evidence of that kind and I can not give any weight to the opponent’s claim that the growing demand over time for the applicant’s goods is indicative of consumer confusion or association of those goods with the opponent.

7. I decide that the section 42(b) ground of opposition fails.

   Section 43

   Trade mark likely to deceive or cause confusion

   An application for the registration of a trade mark in respect of particular  goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the  trade mark in relation to those goods or services would be likely to deceive or cause confusion.  

8. 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

9. 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

10. 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 Lyons

    Hearing Officer

    Trade Marks Hearings

    18 July 2007

    Appendix

    An Act to amend the Trade Marks Act 1995, and for related purposes [Assented to 23 October 2006]

    The Parliament of Australia enacts:

    1  Short title

    This 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.

Commencement information
Column 1	Column 2	Column 3
Provision(s)	Commencement	Date/Details
1.  Sections 1 to 3 and anything in this Act not elsewhere covered by this table	The day on which this Act receives the Royal Assent.	23 October 2006
2. Schedule 1, Part 1	The day on which this Act receives the Royal Assent.	23 October 2006
3. Schedule 1, Part 2	A single day to be fixed by Proclamation. However, if any of the provision(s) do not commence within the period of 6 months beginning on the day on which this Act receives the Royal Assent, they commence on the first day after the end of that period.	27 March 2007
4. Schedule 1, Part 3	The day on which this Act receives the Royal Assent.	23 October 2006