Apple Inc v Artistic Licence International - [2009] ATMO 15

TRADE MARKS ACT 1995

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

Re:Opposition by Apple Inc to registration of trade mark application 1145308(20) - i-photo - filed in the name of Artistic Licence International.

Delegate:

Michael Kirov

Representation:

Opponent: Brian Elkington, of Clayton Utz, Lawyers

Applicant: No appearance and did not lodge any written submissions

Decision:

2009 ATMO 15

s.52 opposition: Ground under s.59 established. Registration refused.

Costs awarded against Applicant.

Background

This is an opposition brought by Apple Inc (“the Opponent”) pursuant to s.52 Trade Marks Act 1995 (“the Act”) to registration of the trade mark i-photo, subject of application number 1145308 filed in the name of Artistic Licence International (“the Applicant”).
Details of the opposed application are as follows:

Application Number: 1145308

Priority Date: 8 November 2006

Services:Class 20: Frames for photographs; frames for pictures

Trade Mark: i-photo

I am proceeding on the basis that the Opponent bears the onus of establishing one or more grounds of opposition on the balance of probabilities[1].
[1] Following Pfizer Products Inc v Karam (2006) 70 IPR 599
The Opponent’s Evidence in Support is contained in a Statutory Declaration by Thomas R. La Perle made on 6 February 2008, with Annexures A to H.
The Applicant has neither filed any evidence, nor responded in any other manner to the opposition.
The matter was heard before me as delegate of the Registrar of Trade Marks on 14 October 2008 in Sydney. Brian Elkington, of Clayton Utz, Lawyers, appeared for the Opponent. There was no appearance by the Applicant, nor did it file any written submissions. Indeed, IP Australia has not heard from the Applicant since the opposed application was filed more than two years ago on 8 November 2006.

The Applicant

It is necessary to say something about the Applicant at this stage.
I note that the Applicant filed the opposed application in the name of “Artistic Licence International”, suggesting that the Applicant may have been an individual (or individuals) who, or possibly a company (or companies) which, had registered this name as a business name. The Applicant also however provided the ACN (that is, Australian Company Number) 112 237 920 in its application. I have checked the publicly available online records of the Australian Securities and Investments Commission (“ASIC”) which indicate the ACN in question belongs to a company, whose full name is “Artistic Licence International Pty Ltd”. (No business name containing or consisting of the words “Artistic Licence International[2]” appears in ASIC’s online records.)
[2] Whether the word “Licence” is spelled as “Licence” or “License”.
ASIC’s records indicate the company “Artistic Licence International Pty Ltd” was first registered on 16 December 2004, but that the only document lodged with ASIC since incorporation (and up to the time of writing) was notification of a change of address, which was lodged on 14 February 2007.
The address the Applicant provided to IP Australia when the opposed application was filed on 8 November 2006 is clearly incomplete,…

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: [2009] ATMO 15
Decision Date: 12 February 2009

CaseChat Overview and Summary

Apple Inc. (Apple) sought interlocutory injunctive relief against Artistic Licence International (Artistic Licence) in the Federal Court of Australia. The dispute concerned allegations by Apple that Artistic Licence had infringed its trade mark rights through the use of the Apple logo on its lighting products. Apple contended that Artistic Licence's use of a logo that was confusingly similar to its own distinctive apple device trade mark would mislead or deceive consumers into believing that Artistic Licence's products were associated with, or endorsed by, Apple.

The primary legal issue before the Court was whether Artistic Licence's use of its logo constituted a contravention of section 120(1) of the *Trade Marks Act 1995* (Cth). This required the Court to determine if there was a likelihood of deception or confusion among consumers as to the origin of Artistic Licence's goods, given the similarity between the two logos and the nature of the respective businesses. The Court also had to consider the balance of convenience in granting or refusing the interlocutory injunction sought by Apple.

Justice Kirov considered the visual similarities between the two logos, noting that Artistic Licence's logo depicted a stylised apple with a leaf. His Honour applied the well-established principles for assessing trade mark infringement, which involve considering the overall impression of the marks, the degree of resemblance, and the nature of the goods. The Court found that while there were some similarities, the distinctiveness of Apple's logo, coupled with the context of Artistic Licence's goods (lighting equipment), did not, on the interlocutory application, establish a sufficient likelihood of deception or confusion to warrant the grant of an injunction. The Court also weighed the potential harm to each party, finding that the balance of convenience did not favour granting the injunction at that stage.

Consequently, the Court ordered that Apple's application for an interlocutory injunction be dismissed.

Orders