Apple Inc

[2014] ATMO 24

TRADE MARKS ACT 1995

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

Re:Trade Mark Application number 1422848 (9, 42) - THUNDERBOLT - in the name of Apple Inc.

Delegate:	Debrett Lyons
Representation:	Applicant: Gabriella Rubagotti of counsel, instructed by Baker & McKenzie, Attorneys & Solicitors
Decision:	2014 ATMO 24 Ex Parte: Section 44 of the Trade Marks Act 1995 – interpretation of specification of goods – amendments offered and accepted which overcome citation -  trade mark to be amended and accepted for registration

Background

1. Apple Inc. made a Convention based filing in Australia for the trade mark THUNDERBOLT in classes 9 and 42.  The Convention date and relevant date for the purposes of this decision is 9 November 2010.  The goods and services covered by the application are set out later.

2. The application was examined as required under section 31 of the Trade Marks Act 1995 (‘the Act’). The examiner raised a ground for rejection of the application under section 44 of the Act based on a number of earlier trade marks. After several rounds of correspondence the objection was maintained but based only on registration 1057372 THUNDERBOLT dated 26 May 2005 (not owned by the applicant), registered in respect of the following goods in class 9:

   Parts and accessories in this class for electronic gaming machines including poker machines; operating software for electronic gaming machines including poker machines, electric and electronic equipment in this class for use in or with gaming machines including poker machines, including jackpot controllers, microprocessors, meters, illuminated signs, electronics systems and associated software for directly or indirectly linking gaming machines including poker machines, electronic systems and associated software for linking interconnected gaming machines including poker machines, and audio/visual apparatus, equipment and systems

3. The trade marks are identical and section 44 of the Act is a ground for rejection of the application if the applied-for goods are the same as, or similar to, the goods of that earlier registration and/or the applied-for services are closely related to the goods of the earlier registration.

Examination history

1. The examiner objected that both the registration and the application include “goods in the nature of parts for and software for games and gaming machines”, in response to which the applicant offered to amend its specification of goods by the addition/deletions shown below:

   Class: 9 Computers; computer peripheral devices, computer terminals; computer hardware; computer gaming machines, microprocessors, memory boards, monitors, displays, keyboards, cables, modems, printers, disk drives, adapters, adapter cards, connectors and drivers; blank computer storage media; magnetic data carriers; computer software; computer software for authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, and electronic publications; computer software and firmware, namely, operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; computer hardware and software for providing integrated telephone communication with computerized global information networks; pre-recorded computer programs for personal information management, database management software, character recognition software, telephony management software, electronic mail and messaging software, paging software, mobile telephone software; database synchronization software, computer programs for accessing, browsing and searching online databases, computer software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server; computer software for the synchronization of data between a remote station or device and a fixed or remote station or device; downloadable electronic publications in the nature of books, plays, pamphlets, brochures, newsletters, journals, magazines, and periodicals on a wide range of topics of general interest; handheld digital electronic devices and software related thereto; MP3 and other digital format audio players; hand held computers, tablet computers, personal digital assistants, electronic organizers, electronic notepads; mobile digital electronic devices, global positioning system (GPS) devices, telephones; handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, and other digital data; cordless telephones; mobile telephones; parts and accessories for mobile telephones; facsimile machines, answering machines, cameras, videophones, telephone-based information retrieval software and hardware; electronic handheld units for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; electronic communication equipment and instruments; telecommunications apparatus and instruments; fonts, typefaces, type designs and symbols in the form of recorded data; chips, discs and tapes bearing or for recording computer programs and software; random access memory, read only memory; solid state memory apparatus; computer and electronic games; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; apparatus for data storage; hard drives; miniature hard disk drive storage units; audio video discs, CD-ROMs, and digital versatile discs; mouse pads; batteries; rechargeable batteries; chargers; chargers for electric batteries; headphones; stereo headphones; in-ear headphones; stereo speakers; audio speakers; audio speakers for home; monitor speakers; speakers for computers; personal stereo speaker apparatus; radio receivers, amplifiers, sound recording and reproducing apparatus, electric phonographs, record players, high fidelity stereo apparatus, tape recorders and reproducing apparatus, loudspeakers, multiple speaker units, microphones; digital audio and video devices; audio cassette recorders and players, video cassette recorders and players, compact disc players, digital versatile disc recorders and players, digital audio tape recorders and players; digital music and/or video players; radios; video cameras; audio, video, and digital mixers; radio transmitters; car audio apparatus; computer equipment for use with all of the aforesaid goods; electronic apparatus with multimedia functions for use with all of the aforesaid goods; electronic apparatus with interactive functions for use with all of the aforesaid goods; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods; parts and fittings for all the aforesaid goods; covers, bags and cases adapted or shaped to contain all of the aforesaid goods, made of leather, imitations of leather, cloth, or textile materials excluding software, electronically readable user manuals or electronic equipment or parts for use in or with games or gaming machines, including poker machines.

2. The Examiner reasoned that the proposed amendment would not overcome the ground for rejection of the application because:

   a)“The punctuation of the goods covered by the conflicting mark means that the audio/visual apparatus, equipment and systems is a discrete item, not necessarily linked with, or limited to, gaming machines. The specification for this trade mark includes goods which fall under the broad description audio/visual apparatus, equipment and systems, as well as software related to such goods.” (“Conflicting Goods”)

   b)“In addition, the software covered by the conflicting trade mark is closely related to the computer programming services you have claimed in class 42.” (“Conflicting Goods and Services”)

3. The applicant requested a formal hearing pursuant to s33(4) of the Act. The matter came before me as a delegate of the Registrar on 13 February 2014 in Sydney , with Gabriella Rubagotti of Counsel, instructed by Baker & McKenzie, Attorneys & Solicitors, appearing for the applicant. Ms Rubagotti supplemented her oral submissions with written submissions.

Submissions

Conflicting Goods

1. The applicant’s submissions were, in essence, that the Examiner had misconstrued the specification of the registration because “audio/visual apparatus, equipment and systems” is not a discrete item but is linked with, and limited to, gaming machines.  In particular, the applicant reasoned that the specification of the registration should be deconstructed thus:

   ·Parts and accessories in this class for electronic gaming machines including poker machines; 

   ·operating software for:

   -      electronic gaming machines including:

   -      poker machines,

   -      electric and electronic equipment in this class for use in or with gaming machines including poker machines, including:

   §jackpot controllers, 

   §microprocessors, 

   §meters, 

   §illuminated signs, 

   §electronics systems and associated software for directly or indirectly linking gaming machines including poker machines,

   §electronic systems and associated software for linking interconnected gaming machines including poker machines, and audio/visual apparatus, equipment and systems

2. Read in this way, the critical part of the specification is more fully expressed as:

   operating software for… electronic gaming machines including… electric and electronic equipment in this class for use in or with gaming machines including poker machines, including… electronic systems and associated software for linking interconnected gaming machines[,] including poker machines, and audio/visual apparatus, equipment and systems

3. The applicant submitted that:

   “A number of factors warrant the conclusion that this is the preferred construction. First, regard must be had to the ordinary and natural meaning of the words chosen in the specification.  … the specification claims 6 third-level explanatory categories (marked “n”). The last two are, respectively: (i) “electronics systems and associated software for directly or indirectly linking gaming machines…” and (ii) “electronic systems and associated software for linking interconnected gaming machines including poker machines…” 

   … the first claims operating software for electronic systems and associated software for directly or indirectly linking gaming machines – that is, software used to connect unconnected gaming machines with each other. The second claims operating software for directly or indirectly linking interconnected gaming machines – that is software used to connect gaming machines that are already connected to each other. This begs the question: to what is it intended that these already connected gaming machines be further connected (or “linked”)? It follows that they must be connected or linked to “audio/visual apparatus, equipment and systems”. 

   … In any event, the plain words of the specification do not admit of any construction that separates “audio/visual apparatus, equipment and systems” as a third discrete type of good in class 9.

   Secondly, regard must be had to the orthodox use of semi-colons in specifications.  They are ordinarily used to separate discrete types of goods or services within a class. Accordingly, in the specification to the cited mark, a semi-colon separates “Parts and accessories in this class for electronic gaming machines including poker machines” (this being the first unique type of good in class 9) from “operating software for electronic gaming machines…” (this being the second unique type of good in class 9).  Had the owner of the trade mark intended for “audio/visual apparatus, equipment and systems” to be a third discrete type of good in class 9, it should have been separated from the final third-level explanatory category (“electronic systems and associated software for linking interconnected gaming machines including poker machines…”) by a semi-colon and the word “and” should have been included between the final and the penultimate third-level explanatory category (“electronics systems and associated software for directly or indirectly linking gaming machines… ”).

   … Thirdly, as is apparent from Part 14.3 of the Trade Marks Office Manual of Practice & Procedure, a “clear specification” is an essential requirement of registration.  As the Manual indicates, this is so because:

   The rights gained from registration of a trade mark are governed by the goods and/or services specified on the Register. This has implications particularly in relation to infringement action, and in relation to searches done by Examiners.

   …

   In the event of legal action for infringement of a registered trade mark, it is essential that the Court is able to determine the exact scope of the goods and/or services covered by the specification.

   …

   The specification and classification of goods and services have implications when considering conflicting trade marks... It is therefore important that any person searching the Trade Marks data base should not be inconvenienced by incorrect classification or specifications which do not clearly state the claimed goods and services.

   Reg 4.4(2) disallows the use of the expressions “all goods”, “all services”, “all other goods” and “all other services” in the specification of goods and/or services. In order to accord with reg 4.4(7) and reg 4.2(1)(c) it is office practice to also not allow terms such as “all products in the class” or vague, non-specific descriptions. While it is ultimately the responsibility of owners and/or their agents to file specifications which meet these requirements, Examiners must check that goods and services are adequately described and that they are, on the basis of the description supplied, correctly classified.

   (emphasis added)

   Accordingly, the obligation ultimately rests with the owner of a relevant application (or the owner’s agent) to ensure that it includes a clear specification.  To the extent that infelicities in drafting render a specification ambiguous, should the application ultimately proceed to registration, as a matter of public policy, the owner of the mark should not be given the advantage of a broad, beneficial construction of the relevant goods or services. In particular, if two or more possible constructions are available …, the narrowest construction is to be preferred.  A plain public policy consideration lies behind this approach: ambiguity and, in particular, deliberate ambiguity (say to avoid a prior citation or to enlarge the monopoly claimed), is to be discouraged.

   Fourthly, the Trade Marks Act contains specific provisions concerning amendments to specifications of goods and services. Thus, s.65(7) and s.83(1)(b) of the Act permit, respectively before and after registration, restriction of the scope of statements of goods or services, or clarification or rewording – unless the amendment would have the effect of extending the rights that (apart from the amendment) the owner has or the applicant would have under the registration. Granting a beneficial construction to a cited mark at examination stage, where such a construction is capable of greatly expanding its relevant monopoly, would sit uncomfortably with this statutory regime concerning amendments to specifications of goods and services.

   Fifthly, in examining an application for registration, there is a presumption of registrability. This is reflected in s.33(1) of the Trade Marks Act which relevantly provides[1]:

   [1] Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 50 at [24] per French J (Tamberlin J agreeing), at [67] per Branson J.

   (1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

   (a)     the application has not been made in accordance with this Act; or
   (b)     there are grounds under this Act for rejecting it.

   …

   (3)If the Registrar is satisfied that:

   …
   (b)     there are grounds under this Act for rejecting it;

   the Registrar must reject the application.

   In Registrar of Trade Marks v Woolworths Ltd (1999) 93 FCR 50, French J stated (at [34]):

   The mandatory language of s.33 and the legislative policy which informs it also suggest that the acceptance stage is not the time for the kind of detailed adversarial examination of the application that might emerge from a contested opposition. This will have an impact upon the way in which the Registrar approaches the question whether a mark proposed for registration is deceptively similar to others. The condition of refusal of an application is that the Registrar is satisfied that there are grounds for rejection. If not so satisfied the Registrar must accept the application.

   Further, in Kenman Kandy (Aust) Pty Ltd v Registrar of Trade Marks (2002) 122 FCR 494, French J elaborated on the point (at [50]) thus:

   …it is necessary to bear in mind that this trade mark is still at the registration stage. It enjoys the benefit of the presumption of registrability mandated by s.33. To the extent that critical criteria upon which registration might be rejected are in doubt, the application should be accepted. Closer adversarial scrutiny may occur in opposition - Registrar of Trade Marks v Woolworths at 377.”

Conflicting Goods and Services

1. At the hearing Ms Rubagotti advised me that, provided that it would overcome this objection, the applicant would amend the specification of services by addition of the underscored words shown below:

   Class: 42 Application service provider (ASP) services featuring computer software; application service provider (ASP) services featuring software for authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, and electronic publications; scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer hardware and software consulting services; computer programming excluding computer programming for games or gaming machines, including poker machines; support and consultation services for developing computer systems, databases and applications; graphic design for the compilation of webpages on the Internet; information relating to computer hardware or software provided on-line from a global computer network or the Internet; creating and maintaining web-sites; hosting the web-sites of others; providing search engines for obtaining data via communications networks; application service provider (ASP) services featuring software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multimedia content, and software featuring musical sound recordings, entertainment-related audio, video, text and multimeadia content; providing search engines for obtaining data on a global computer network; information, advisory and consultancy services relating to all the aforesaid

Reasons for Decision

1. In short, I agree with the applicant’s construction of the specification of the cited registration.  I also agree that the amendments, if made, would overcome the citation.  Since the applicant has already requested the Office to amend the class 9 specification and since authority to amend the class 42 specification was given at the hearing, nothing further is required of the applicant.

Decision

1. Section 33 of the Act provides:

Section 33:Application accepted or rejected

(1)The Registrar must, after the examination, accept the application unless he or she is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it.

Note:For this Act see section 6.

(2)The Registrar may accept the application subject to conditions or limitations.

Note:For limitations see section 6.

(3)If the Registrar is satisfied that:

(a)the application has not been made in accordance with this Act; or

(b)there are grounds under this Act for rejecting it;

the Registrar must reject the application.

Note:For this Act see section 6.

(4)The Registrar may not reject an application without giving the applicant an opportunity of being heard.

Note:For applicant see section 6.

1. For the reasons given, I direct that application number 1422848 be amended as described after which it can proceed to registration for the following  goods and services:

   Class: 9 Computers; computer peripheral devices, computer terminals; computer hardware; microprocessors, memory boards, monitors, displays, keyboards, cables, modems, printers, disk drives, adapters, adapter cards, connectors and drivers; blank computer storage media; magnetic data carriers; computer software; computer software for authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, and electronic publications; computer software and firmware, namely, operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; computer hardware and software for providing integrated telephone communication with computerized global information networks; pre-recorded computer programs for personal information management, database management software, character recognition software, telephony management software, electronic mail and messaging software, paging software, mobile telephone software; database synchronization software, computer programs for accessing, browsing and searching online databases, computer software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server; computer software for the synchronization of data between a remote station or device and a fixed or remote station or device; downloadable electronic publications in the nature of books, plays, pamphlets, brochures, newsletters, journals, magazines, and periodicals on a wide range of topics of general interest; handheld digital electronic devices and software related thereto; MP3 and other digital format audio players; hand held computers, tablet computers, personal digital assistants, electronic organizers, electronic notepads; mobile digital electronic devices, global positioning system (GPS) devices, telephones; handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, and other digital data; cordless telephones; mobile telephones; parts and accessories for mobile telephones; facsimile machines, answering machines, cameras, videophones, telephone-based information retrieval software and hardware; electronic handheld units for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; electronic communication equipment and instruments; telecommunications apparatus and instruments; fonts, typefaces, type designs and symbols in the form of recorded data; chips, discs and tapes bearing or for recording computer programs and software; random access memory, read only memory; solid state memory apparatus; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; apparatus for data storage; hard drives; miniature hard disk drive storage units; audio video discs, CD-ROMs, and digital versatile discs; mouse pads; batteries; rechargeable batteries; chargers; chargers for electric batteries; headphones; stereo headphones; in-ear headphones; stereo speakers; audio speakers; audio speakers for home; monitor speakers; speakers for computers; personal stereo speaker apparatus; radio receivers, amplifiers, sound recording and reproducing apparatus, electric phonographs, record players, high fidelity stereo apparatus, tape recorders and reproducing apparatus, loudspeakers, multiple speaker units, microphones; digital audio and video devices; audio cassette recorders and players, video cassette recorders and players, compact disc players, digital versatile disc recorders and players, digital audio tape recorders and players; digital music and/or video players; radios; video cameras; audio, video, and digital mixers; radio transmitters; car audio apparatus; computer equipment for use with all of the aforesaid goods; electronic apparatus with multimedia functions for use with all of the aforesaid goods; electronic apparatus with interactive functions for use with all of the aforesaid goods; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods; parts and fittings for all the aforesaid goods; covers, bags and cases adapted or shaped to contain all of the aforesaid goods, made of leather, imitations of leather, cloth, or textile materials excluding software, electronically readable user manuals or electronic equipment or parts for use in or with games or gaming machines, including poker machines.

Class: 42 Application service provider (ASP) services featuring computer software; application service provider (ASP) services featuring software for authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, and electronic publications; scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software; computer hardware and software consulting services; computer programming excluding computer programming for games or gaming machines, including poker machines; support and consultation services for developing computer systems, databases and applications; graphic design for the compilation of webpages on the Internet; information relating to computer hardware or software provided on-line from a global computer network or the Internet; creating and maintaining web-sites; hosting the web-sites of others; providing search engines for obtaining data via communications networks; application service provider (ASP) services featuring software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multimedia content, and software featuring musical sound recordings, entertainment-related audio, video, text and multimedia content; providing search engines for obtaining data on a global computer network; information, advisory and consultancy services relating to all the aforesaid

Debrett Lyons
Hearing Officer
Trade Marks Hearings
7 March 2014