Apple Inc. - [2025] ATMO 132

TRADE MARKS ACT 1995

DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
ReInternational Registration 1722400 (9) - Australian Trade Mark Application number 2347460 (9) – CALLKIT - in the name of Apple Inc.

Delegate: Nicholas Smith

Representation: Holder: Gabriella Rubagotti of Counsel instructed by Ruth Horvai of Baker McKenzie

Decision: 2025 ATMO 132
Regulation 17A.24: final decision on examination – consideration of section 41 of the Trade Marks Act 1995 – IRDA to be accepted for possible extension of protection to Australia
Background

On 27 February 2023, Apple Inc. (‘Holder’) applied to extend protection to Australia of International Registration 1722400 under the provisions of the Trade Marks Act 1995 (‘Act’) and Trade Marks Regulations 1995 (‘Regulations’). Such an application is referred to as an International Registration Designating Australia (‘IRDA’). The current details of the IRDA appear below:

Application No.:

2347460

International Reg.

1722400

Filing Date:

27 February 2023

Priority Date

31 August 2022[1]

Goods: Class 9: Downloadable application development software; downloadable computer software for use as an application programming interface (API) for building software applications.
(‘Holder’s Goods’)

Trade Mark:

CALLKIT

(‘Trade Mark’)

[1] Convention priority claimed from Jamaican trade mark number 87377.

The IRDA was examined as required under reg 17A.12 of the Regulations. On 17 April 2023 IP Australia issued a first adverse examination report which amounted to a Notification of Provisional Refusal of the IRDA, identifying a ground for rejection pursuant to s 41 of the Act in respect of the Holder’s Goods (‘First Report’). With respect to the s 41 ground, the examiner stated that the Trade Mark is not capable of distinguishing the specified services because the mark is comprised to the words CALL and KIT indicating that the Holder provides a set of software development tools, API calls, and related goods, for the development of software, including software for making phone calls, and that these goods are provided in the form of a software development kit, and that other traders should be able to use the descriptive term CALLKIT in connection with the Holder’s Goods.
Subsequent to this, the Holder and this office engaged in further correspondence with IP Australia issuing two further examination reports maintaining the s 41 ground for rejection in respect of the Holder’s Goods. The Holder then requested to be heard by the Registrar of Trade Marks under reg 17A.17 of the Regulations.
This matter was listed for hearing on 3 June 2025. On 27 May 2025 the Holder filed written submissions that supplement the earlier submissions made by the Holder to the examiner (‘Holder’s Submissions’) as well as the declaration of Jackson Ion Moir, Paralegal at Baker McKenzie, the Holder’s representatives dated 27 May 2025 with Annexures JIM-1 to JIM-16 (‘Moir Declaration’). The Holder’s Submissions indicated that they would rely on the Moir Declaration as well as evidence previously filed in this matter, being a declaration of…

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: [2025] ATMO 132
Decision Date: 8 July 2025

CaseChat Overview and Summary

This decision concerns an application by Apple Inc. for an International Registration Designating Australia (IRDA) to be accepted for possible extension of protection in Australia. The Hearing Officer, Nicholas Smith, acting as a delegate of the Registrar of Trade Marks, was tasked with determining whether to accept or reject the IRDA.

The primary legal issue before the Hearing Officer was whether the trade mark in question was a direct reference to the character or quality of the goods for which protection was sought, as per section 41 of the relevant Act. This required an assessment of whether the trade mark had an "ordinary signification" that would directly describe the goods.

The Hearing Officer found that the trade mark possessed multiple meanings, both generally and within the specific field of software development, which made it difficult to ascertain a single ordinary signification. Relying on the reasoning in a previous decision by Beach J, the Hearing Officer concluded that the trade mark did not have a signification that would amount to a direct reference to the character and quality of the Holder’s Goods. Consequently, the ground for rejection under section 41 of the Act was not established.

As the Hearing Officer was not satisfied that there were grounds for rejecting the IRDA, and in accordance with Regulation 17A.24, the IRDA was accepted for possible extension of protection in Australia.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

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Decision

Reasons for decision

I consider the Trade Mark to have each of the features identified by Beach J in the case above. In particular, I note the multiple meanings of the term ‘call’ both generally and in the field of software development which further make it difficult to identify an ordinary signification. I do not accept that the Trade Mark has the signification identified by the examiner. I cannot, either through the use of ordinary dictionary definitions or any material before me, identify any particular ordinary signification of the Trade Mark that would amount to a direct reference to the character and quality of the Holder’s Goods. As such, I do not need to consider the second of the two steps established by Cantarella (including a review of the material provided by the Holder) and I find that the ground for rejection has not been established. Decision Regulation 17A.24 provides:17A.24Final decision on examination(1)The Registrar must, after the examination, accept the IRDA unless he or she is satisfied that:(a)it is not in accordance with this Division; or(b)there are grounds for rejecting it.(2)The Registrar may accept the IRDA subject to conditions or limitations.(3)The Registrar must reject an IRDA, in whole or in part, if the Registrar is satisfied that:(a)it is not in accordance with this Division; or(b)there are grounds for rejecting it, in whole or in part. As I am not satisfied that there is a ground for rejecting the IRDA under section 41 of the Act I must accept the IRDA for possible extension of protection in Australia. As a delegate of the Registrar, I now do so.Nicholas SmithHearing OfficerDelegate of the Registrar of Trade Marks8 July 2025

Ratio Decidendi

Legal Principle Established

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Delegate:	Nicholas Smith
Representation:	Holder: Gabriella Rubagotti of Counsel instructed by Ruth Horvai of Baker McKenzie
Decision:	2025 ATMO 132 Regulation 17A.24: final decision on examination – consideration of section 41 of the Trade Marks Act 1995 – IRDA to be accepted for possible extension of protection to Australia

Application No.:	2347460
International Reg.	1722400
Filing Date:	27 February 2023
Priority Date	31 August 2022[1]
Goods:	Class 9: Downloadable application development software; downloadable computer software for use as an application programming interface (API) for building software applications. (‘Holder’s Goods’)
Trade Mark:	CALLKIT	(‘Trade Mark’)