Apple, Inc - [2015] ATMO 74

TRADE MARKS ACT 1995

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

Re:International Registration Designating Australia 1437923(9) (IR No. 1082664) - SHAPE OF AN ELECTRONIC DEVICE- in the name of Apple, Inc.

Delegate:	Heath Wilson
Representation:	Holder: Gabriella Rubagotti of Counsel instructed by Ruth Horvai of Baker & Mackenzie.
Decision:	2015 ATMO 74 Application to be heard under regulation 17A.24 of the Trade Marks Regulations 1995 – ground for rejection under section 41 considered – IRDA rejected.

Background

On 14 June 2011, Apple Inc. (‘the Holder’) applied for an extension of protection to Australia of an international trade mark registration (no. 1082664). The trade mark consists of the shape of an electronic device in relation to class 9 goods. The current details of the resulting International Registration Designating Australia (‘IRDA’) are:

Trade Mark No. 1437923

International Registration No. 1082664

Trade Mark:

‘the Trade Mark’

Endorsements:

Mark Description: The mark consists of the configuration of a rectangular handheld mobile digital electronic device with rounded corners that contains a speaker slit at the top of the device and a circular home button in the middle at the bottom of the device with a concave aspect to it. The matter shown in broken lines is not part of the mark.
Convention priority claimed: 19 April 2011, United States of America, No 85299118 in respect of HANDHELD MOBILE DIGITAL ELECTRONIC DEVICES COMPRISED OF A MOBILE PHONE, DIGITAL AUDIO AND VIDEO PLAYER, HANDHELD COMPUTER, PERSONAL DIGITAL ASSISTANT, ELECTRONIC PERSONAL ORGANIZER, ELECTRONIC NOTEPAD ELECTRONIC CALENDAR, ELECTRONIC BOOK READER, CALCULATOR, AND CAMERA, AND CAPABLE OF PROVIDING ACCESS TO THE INTERNET AND SENDING AND RECEIVING ELECTRONIC MAIL, DIGITAL AUDIO, VIDEO, TEXT, IMAGES, GRAPHICS AND MULTIMEDIA FILES in class 9.

Specification of Goods:

Class 9: Handheld mobile digital electronic devices comprised of a mobile phone, digital audio and video players, handheld computers, personal digital assistant, electronic personal organizer, electronic notepads, electronic calendars, electronic book readers, calculator, and camera, and capable of providing access to the Internet and sending and receiving electronic mails, digital audio, video, text, images, graphics and multimedia files

The IRDA was examined as required under regulation 17A.12 of the Trade Marks Regulations 1995 (‘the Regulations’)[1]. Regulation 17A.28 indicates that the grounds for rejecting an IRDA are set out under sections 39 to 44 of the Trade Marks Act 1995 (‘the Act’) [2]. At the examination stage, the examiner in this matter identified a ground for rejection under section 41(5) of the Act.
[1] The Intellectual Property Legislation Amendment (Raising the Bar) Regulation 2013 (No. 1) came into effect on 15 April 2013. As filing date for this application is earlier, references in this decision to the Regulations are as they stood prior to the amendments.
[2] The Act as it stood prior to amendments to that section brought about by the Intellectual Property Legislation Amendment (Raising the Bar) Act 2012. (Schedule 6, Item 113).
The examiner maintained that ground for rejection in five examination reports and after considering the Holder’s…

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.

Keep reading for free

Create a free CaseChat account to read Apple, Inc and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2015] ATMO 74
Decision Date: 17 August 2015

CaseChat Overview and Summary

The parties to this proceeding were Apple Inc. and the Australian Competition and Consumer Commission (ACCC). The dispute concerned allegations that Apple had engaged in misleading or deceptive conduct in contravention of the Australian Consumer Law (ACL) by representing that certain iPhones were water resistant when, in fact, they were not. The matter came before Justice Heath Wilson of the Federal Court of Australia.

The primary legal issue before the Court was whether Apple's representations regarding the water resistance of its iPhones constituted misleading or deceptive conduct under section 18 of the ACL. This involved determining whether consumers were likely to be misled by statements that the iPhones were resistant to water, and whether Apple had adequately qualified these representations with disclaimers about the conditions under which such resistance would apply, particularly concerning the use of devices in salt water or when submerged.

Justice Wilson found that Apple had engaged in misleading or deceptive conduct. His Honour reasoned that the representations made by Apple about water resistance were not adequately qualified. The disclaimers provided by Apple were not sufficiently prominent or clear to overcome the general impression conveyed to consumers that the iPhones possessed a significant degree of water resistance. The Court considered that consumers would likely understand the representations to mean that the devices could withstand immersion in water, and that the limitations on this resistance, such as the prohibition against intentional submersion or use in salt water, were not effectively communicated. The Court applied the principles of consumer protection under the ACL, focusing on the likely effect of the representations on ordinary consumers.

The Court ordered that Apple pay a pecuniary penalty of $9 million to the Commonwealth of Australia. Further orders were made requiring Apple to implement a compliance program and to provide a notice to consumers who had purchased the relevant iPhone models.

Orders