Apple Inc. v Cleaar Marketing Australia Pty Ltd

[2012] ATMO 94

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 1316151 (38) – - in the name of Cleaar Marketing Australia Pty Ltd

Delegate:	Michael Kirov
Representation:	Opponent: David Kell of Counsel instructed by Robert Arnold of Baker & McKenzie, Attorneys & Solicitors. Applicant: Relied on written submissions.
Decision:	2012 ATMO 94 Section 52 opposition: s 44 considered – Trade Mark deceptively similar to Opponent’s IPHONE trade mark registered for similar services –opposition established.  Costs awarded against the Applicant.

Background

1. This is an opposition brought by Apple Inc (“the Opponent”) pursuant to s 52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark subject of the application detailed below in the name of Cleaar Marketing Australia Pty Ltd (“the Applicant”):

   Application Number:             1316151
   Trade Mark:               (“the Trade Mark”)
   Priority Date:    20 August 2009   (“the Priority Date”)

   Services:Class 38: Voip (voice over Internet protocol) services

2. The Opponent, an American company, is a long established designer, manufacturer and retailer of personal computers, digital music players, mobile “smart” phones, software and computer related devices, accessories and peripherals.  The Opponent also provides a range of technology, communication and entertainment related services, broadly described in its evidence as “including internet-based media retail services, the provision of third party digital content and applications, and telecommunications services”.  According to its evidence, “As at 26 May 2010, [the Opponent] had a market value of over US$220 billion, making it the largest technology firm in the world by market capitalization.”

3. Since January 2007 one of the Opponent’s most successful products in Australia and around the world has been a mobile phone which, inter alia, also provides access to the Internet and to email (described in its evidence as a “mobile communication device”), and which is sold under the trade mark iPhone (“the iPhone Device”).  My own knowledge as a consumer suggests, and the evidence confirms to my satisfaction, that both the iPhone Device and the iPhone trade mark were very well known in Australia as at the Priority Date.

4. The Applicant is an Australian company based in Melbourne which (according to the records of the Australian Securities and Investments Commission) was incorporated on 15 June 2009.  The Applicant states in its evidence that it applied to register the Trade Mark:

   in Class 38 VOIP (Voice over Internet Protocol) services, believing that iFoneline describes an internet telephone line, and/or projects a telephone service constructed over the Internet.  Since inception, iFoneline has been promoted as an internet telephone service and not in any way promoted as a brand of a mobile digital device.

   (original bolding and italics)

5. At the heart of the present opposition is the claimed similarity of the Trade Mark to marks containing or consisting of the element IPHONE which had been used and/or registered by the Opponent in Australia as at the Priority Date.  I mention that in use this element is usually rendered with a lower case “i”, (that is, in the form iPhone), while in the Opponent’s registered marks it is often rendered in all capitals. In terms of s 7(1) of the Act I confirm I consider this variation does “not substantially affect the identity” of the trade marks concerned and has had no bearing on my decision.

6. Acceptance of the opposed application for possible registration was advertised in the Australian Official Journal of Trade Marks on 24 December 2009 and the Opponent filed its Notice of Opposition (“the Notice”) on 24 March 2010.

7. I heard the matter as delegate of the Registrar of Trade Marks on 13 August 2012 in Sydney.  The Applicant did not appear and was not represented at the hearing, but relied on written submissions prepared by Johnathan Nguyen, one of its Directors.  Copies of these submissions, which are dated 11 July 2011, were sent to IP Australia and to the Opponent’s representatives last year.  David Kell of Counsel, instructed by Robert Arnold of Baker & McKenzie, Attorneys & Solicitors, appeared for the Opponent.  Mr Kell’s oral submissions were supplemented by written submissions emailed to both the Applicant and me in the week before the hearing.

   Grounds of Opposition and Onus

8. The Notice lists some fourteen grounds corresponding to various provisions of the Act. The Opponent’s attorneys nevertheless confirmed via email on 3 August 2012 that the Opponent would only be pressing those grounds based on sections 43, 44, 60 and 62A of the Act. To succeed in its opposition the Opponent bears the onus of establishing at least one of these four grounds. As will become apparent, I have only found it necessary to address the Opponent’s s 44 ground in this decision and this is discussed below. Of course should the decision be appealed, it would always remain open to the Opponent to plead any ground it considered relevant in proceedings before the Court.

9. As indicated by Kitto J in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 595, the relevant date at which the rights of the parties are to be determined is the Priority Date.

   Standard of Proof

10. I confirm I am proceeding on the basis that the relevant standard of proof required of the Opponent is the ordinary civil standard based on the balance of probabilities.[1]

    [1] Following Gyles J in Pfizer Products Inc v Karam (2006) 70 IPR 599 at [6] to [26]. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks (2009) 82 IPR 13 per Sundberg J at [22] to [27], Sports Warehouse Inc v Fry Consulting Pty Ltd (2010) 87 IPR 300 per Kenny J at [30] to [40], NV Sumatra Tobacco Trading Company v British American Tobacco Services Limited [2011] FCA 1051 (9 September 2011) per Greenwood J at [16] to [32], Allergan, Inc v Di Giacomo (2011) 94 IPR 541 per Stone J at [11] to [12], Nexans S.A. v. Nex 1 Technologies Co. Ltd [2012] FCA 180 (2 March 2011) per Murphy J at [9], Tricarico v Dunn Bay Holdings Pty Ltd [2012] FCA 271 (23 March 2012) per McKerracher J at [9] to [10] and Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13].

    The Evidence

11. The parties served and filed Evidence in Support, Evidence in Answer and Evidence in Reply as follows:

    Evidence in Support

    ▪ Declaration by Thomas R. La Perle made 18 April 2011, with Annexures TRLP-1 to TRLP-34[2]

    Evidence in Answer

    ▪ Declaration by Johnathan L. Nguyen made 18 July 2011, with four attachments (being two “news articles” downloaded from the internet, a two page document bearing the heading “Answer to Notice of Opposition with Affirmative Defenses”[3] and a copy of a flyer used to promote the Applicant’s services)

    Evidence in Reply

    ▪ Declaration by Luba Poukchanski made 16 November 2011, with Annexures LP-1 and LP-2

    Discussion

    [2] Reference is also made in the La Perle declaration to “Confidential Exhibit TRLP-1”.  However this Exhibit was not served or filed in the proceedings and is not relied on by the Opponent.

    [3] The two attached pages are in fact identical to Mr Nguyen’s written submissions dated 11 July 2011 referred to in paragraph 7 above.

    Section 44

12. The ground based on section 44 of the Act is indicated in the Notice as follows:

    the [Trade Mark] is substantially identical with or deceptively similar to one or more trade mark registrations and/or applications having an earlier priority date in respect of similar goods/services or closely related goods/services.

13. Only s 44(2) of the Act is relevant in this case and this is set out below:

    Identical etc. trade marks

    44.(2) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of services (applicant's services) must be rejected if:

    (a) it is substantially identical with, or deceptively similar to:

    (i) a trade mark registered by another person in respect of similar services or closely related goods; or
    (ii) a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.

    Note 1:  For deceptively similar see section 10.

    Note 2:  For similar services see subsection 14(2).
    Note 3:  For priority date see section 12.

14. The Opponent is the owner of a number of registrations for marks containing or consisting of the element IPHONE, although in support of its s 44 ground it specifically relies on the four registrations detailed below (“the Opponent’s Registrations”):

Regn No.	Trade Mark	Priority Date	Class(es)
930990	IPHONE	19.04.02	9
1136410	(Series)	27.03.06	9
1136412	27.03.06	28
1186456	IPHONE	8.01.07	16, 25, 35, 38, 41 & 42

1. For s 44 to apply at all, the priority dates of the registrations relied upon must be earlier than the 20 August 2009 priority date of the opposed application. This requirement is met by all of the Opponent’s Registrations.

2. That said, as far as the Opponent’s s 44 ground is concerned I have only found it necessary to consider the Class 38 specification of registration 1186456 IPHONE, which is set out below:

   Telecommunication access services; communication by computer; transmission of data and of information by electronic means, broadcasting or transmission of radio and television programs; provision of telecommunications connections to computer databases and the Internet; electronic transmission of streamed and downloadable audio and video files via computer and other communications networks; web casting services; delivery of messages by electronic transmission; provision of telecommunications connections to electronic communications networks, for transmission or reception of audio, video or multimedia content; streaming of video content, streaming and subscription audio broadcasting of spoken word, music, concerts, and radio programs, broadcasting prerecorded videos featuring music and entertainment, television programs, motion pictures, news, sports, games, cultural events, and entertainment-related programs of all kinds, via computer and other communications networks; providing on-line bulletin boards for the transmission of messages among computer users concerning entertainment in the nature of music, concerts, videos, radio, television, film, news sports, games and cultural events; communication services namely, matching users for the transfer of music, video and audio recordings via communication networks provision of information, consultancy and advisory services of all the aforesaid services; provision of access time to web-sites featuring multimedia materials; providing database and directories via communications networks for obtaining data in the fields of music, video, film, books, television, games and sports; providing users with access time to electronic communications networks with means of identifying, locating, grouping, distributing, and managing data and links to third-party computer servers, computer processors and computer users; providing computer data bases in the nature of a bulletin board in the fields of music, video, film, books, television, games and sports

3. In this regard it is sufficient for success under s 44(2) if the Opponent establishes on the balance of probabilities that:

   • the opposed application covers similar services[4] to those covered by the Class 38 specification of registration 1186456; and

   • the Trade Mark is substantially identical with, or deceptively similar to, the IPHONE trade mark subject of registration 1186456.

   [4] As defined in s 14(2) of the Act, namely the same services and/or services “of the same description”.

4. Although the Applicant’s evidence and submissions are discussed in more detail below, it is convenient here to mention a fundamental misunderstanding regarding the operation of s 44 of the Act which is evident from this material. It is that, contrary to the Applicant’s apparent belief, the Opponent is entitled to rely on the coverage of registration 1186456, (and in particular of its wide coverage of services in Class 38), whether or not its registered IPHONE trade mark has acquired a reputation in the marketplace for such services and, indeed, even if the Opponent had not used the mark for any services in Class 38 at all. That is not to say that the Opponent has not in fact used the mark for relevant services, only that this is not a question which need concern me in considering the Opponent’s s 44 ground.

5. Turning now to the merits of the s 44 ground, I note that in this case the Opponent does not claim that the Trade Mark is “substantially identical” with the IPHONE trade mark, but does submit it is “deceptively similar”.

6. As Mr Kell highlighted in his submissions, French J (as he then was) pointed out[5] in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 (“Woolworths”) that the logic of s 44 suggests the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, the relevant goods or services of the earlier trade mark owner is “logically antecedent to” assessing the deceptive similarity of the parties’ trade marks. In this regard French J explicitly approved the observation in Wilcox J’s first instance decision in the Woolworths matter[6] that, “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive”.

   [5] In the context of closely related goods and services, but relevant also in the context of “similar services” as defined in s 14(2) of the Act.

   [6] Woolworths Limited v Registrar of Trade Marks (1998) 42 IPR 615 (at 624).

7. The services covered by the opposed application are “Voip (voice over Internet protocol) services” in Class 38 (hereafter referred to as “VOIP services”).  I accept Mr Kell’s description of the term “Voip” as “the common (and familiar) name given to a series of protocols that allow for voice and multimedia communications from computer to computer or computer-like devices such as a smart phone (eg the iPhone Device) using a network, most commonly the Internet”.  Moreover, I agree with him that VOIP services are implicitly covered within the Class 38 specification of the Opponent’s registration 1186456.  In particular, I agree that (at least) the following Class 38 services covered by the registration effectively include VOIP services or services essentially the same as VOIP services:

   ·     telecommunication access services;

   ·     communication by computer;

   ·     provision of telecommunications connections to…the Internet;

   ·     electronic transmission of streamed…audio…files via computer and other communications networks;

   ·     provision of telecommunications connections to electronic communications networks, for transmission or reception of audio…content;

   ·     streaming and subscription audio broadcasting of spoken word; and

   ·     providing users with access time to electronic communications networks with means of identifying, locating, grouping, distributing, and managing data and links to third-party computer servers, computer processors and computer users.

8. I will accordingly consider the issue of whether the Trade Mark is deceptively similar to the IPHONE mark subject of registration 1186456 (hereafter “the Opponent’s Mark”) on the basis that both trade marks might in principle be used for (essentially identical) VOIP services in Class 38.

9. In The Coca-Cola Company v All-Fect Distributors Ltd (1999) 96 FCR 107; 47 IPR 481 the Full Federal Court (Black CJ, Sundberg and Finkelstein JJ) said the following at [39] concerning the term “deceptively similar”:

   [39] Section 10 of the Act provides that a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other mark as to be likely to deceive or cause confusion. No intention to deceive or cause confusion is required: Re Bali Brasserie Co Inc's Registered Trade Mark (1968) 118 CLR 128 at 139. The distinction between “likely to deceive” and “likely to cause confusion” lies not in some element of culpability in the user to be inferred from the word “deceive”, but in the effect of the mark on prospective purchasers. In Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1979] RPC 410 at 423 Richardson J, in the New Zealand Court of Appeal, said:

   “Deceived” implies the creation of an incorrect belief or mental impression and causing “confusion” may go no further than perplexing or mixing up the minds of the purchasing public … Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant's mark come from some other source and confused to being caused to wonder whether that might not be the case.

10. In relation to confusion in particular, Dodds-Streeton J noted recently in Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 (19 March 2012) at [105]:

    It is well established that trade marks may be deceptively similar for the purposes of ss 44(1) and (2) of the Act even if confusion is unlikely to persist up to the point of, and contribute to, inducing sale.

11. In Woolworths French J conveniently restated the major considerations involved in assessing deceptive similarity under the Act based on principles formulated by Kitto J in Southern Cross:[7]

    [7] (1999) 45 IPR 411 at [50].

    In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

    (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring.  A mere possibility is not sufficient.

    (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source.  It is enough if the ordinary person entertains a reasonable doubt.  It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

    (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration.  These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

    (iv) The rights of the parties are to be determined as at the date of the application.

    (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark.  The question is not limited to whether a particular use will give rise to deception or confusion.  It must be based upon what the applicant can do if registration is obtained.

    In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc (1973) 129 CLR 353 at 362:

    “...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion.”

1. It has long been held that in order to assess deceptive similarity trade marks should not be compared side by side[8].  Rather, I should attempt to assess the effect or impression produced on the mind of potential purchasers of VOIP services, who know of the Opponent’s Mark (and perhaps have an imperfect recollection of it), when they encounter such services being offered under the Trade Mark.  As indicated in the above quote from Woolworths, it is enough if the person of ordinary intelligence and memory would be caused to wonder, or be left in doubt, about whether the services in question come from the same source.

   [8] Australian Woollen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 658; Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407; (1961) 1b IPR 523, per Windeyer J (at first instance) at CLR 415; IPR 529.

2. Before discussing Mr Kell’s submissions on this issue it is convenient to consider the Applicant’s evidence.  In this regard the Nguyen declaration is quite brief and is reproduced in full below (minus attachments):

   1.      I am a Director of [the Applicant] since incorporation and am responsible for the decision to apply for the Trade Mark “iFoneline” application No. 1316151.  The decision to apply for the mentioned trade mark was based on my understanding that it will cause neither conflict nor confusion with any other brands of registered trademarks.  The attached affirmative defenses state various factors which led us to confidently apply for the “iFoneline” trade mark.

   2.      The decision to apply for the said trade mark was also based on my belief that it will not meet any possible opposition.  The attached news articles “Apple faces iPhone trade mark lawsuit” and “Cisco sues Apple over use of iPhone trademark”, the internet domain and website registered and run by Nehos Communications were parts of our consideration prior to applying for the trade mark.

   3.      Since inception iFoneline was registered with relevant bodies to run its business

   a)[the Applicant] registered internet domains and run (sic) commercial websites on and since August 31, 2009.

   b)[the Applicant] registered the business name IFONELINE with Consumer Affairs Victoria on July 6, 2009, Registration B2197969Y.  iFoneline has since then been used as a trading name.

   c)[the Applicant] lodged its trade mark application to (sic) IP Australia on August 20, 2009.

   During the period from July 7, 2009 to August 19, 2009, iFoneline conducted survey (sic) through flyers distribution advertising campaigns (sic) in selected areas of New South Wales and Victoria.  The survey involved asking customers and potential customers to determine if iFoneline would be perceived as associated or conflict with any other brand name.  The result of these initial surveys proved that customers do not in any way mix the name “iFoneline” with any other brands.  This prompted us to proceed with the application for trade mark “iFoneline”.  The attached DL Flyer is regular (sic) used in periodic advertising campaigns.  To date, there has not been any query even once by any customers of ours over similarity or confusion of iFoneline brand name.

3. As Mr Nguyen indicates, there are four attachments to his declaration.  The two “news articles” to which he refers were apparently downloaded from the websites and and are dated 11 and 10 January 2007 respectively.  They refer to an action commenced in the United States against the Opponent on 9 January 2007 (being after the priority date of the Opponent’s registration 1186456) by a company claiming registered rights in the trade mark iPhone in that country (“Cisco”) in relation to, as it happens, “a voice over internet protocol (VoIP) handset range”.  Both articles explicitly indicate that the parties had been in discussions for some time, that the action was likely to be settled amicably and that, whatever the outcome in the United States, the Opponent had superior rights to the iPhone trade mark in Australia in any event.  As highlighted by Mr Kell, moreover, one is caused to wonder why Mr Nguyen’s research apparently did not uncover the fact that the litigation in the United States was in fact settled some six weeks after it was commenced.  In this regard the Poukchanski declaration forming the Opponent’s Evidence in Answer annexes a copy of a press release by the Opponent dated 21 February 2007 entitled “Cisco and Apple Reach Agreement on iPhone Trademark”, which states:

   Cisco and Apple today announced that they have resolved their dispute involving the “iPhone” trademark.  Under the agreement, both companies are free to use the “iPhone” trademark on their products throughout the world.  Both companies acknowledge the trademark ownership rights that have been granted, and each side will dismiss any pending actions regarding the trademark.  In addition, Cisco and Apple will explore opportunities for interoperability in the areas of security, and consumer and enterprise communications.  Other terms of the agreement are confidential.

4. The third attachment to the Nguyen declaration, as mentioned earlier, is entitled “Answer to Notice of Opposition with Affirmative Defenses” and is a copy of Mr Nguyen’s written submissions dated 11 July 2011. It contains several claimed “defenses corresponding to the grounds of opposition presented in the Notice of Opposition” which, insofar as (arguably) relevant to the s 44 ground, I would summarise as follows:

   ·Given the results of the survey referred to in paragraph 3 of the Nguyen declaration (hereafter “the Survey”) and the fact that “[s]ince inception, iFoneline has been promoted as an internet telephone service and not in any way promoted as a brand of a mobile digital device”, “it is without ground to assume that the use of [the] iFoneline trade mark would be likely to deceive or cause confusion”;

   ·The apparent coexistence of “brands like…Panasonic and Palsonic, Fujitsu and Daijitsu trademarks used in the same product/service fields has created neither commercial conflicts nor images that may be seen as associated with each other”;

   ·The Survey and the Applicant’s “experience to date” indicate “the word iFoneline is split and pronounced as ‘ifone line’or ‘if one line’ or ‘ifo one line’ by our potential and current customers, suppliers and associates” and “[r]egardless of how they see and pronounce the name, none of them so far has mixed [the] iFoneline brand with any other brand they may have known, and this includes another website that is relatively alike”.[9]  These “facts indicate that Australian consumers are well aware of, and are able to distinguish products/services, offered by different brand names from which there may be one or more letters in the brand name that are different to the others” (sic);

   ·The Opponent does not have exclusive rights in the prefix “i” and “[i]t therefore would be contrary to law if the opposition (sic) claims exclusive rights to the use of a generic letter, or word such as phone”; and

   ·The Applicant is the registered owner of the domain names and According to Mr Nguyen this URL is owned by an unrelated third party named Nehos Communications Pty Ltd.  I mention that the URL in question diverts to a religious website apparently operated since 2009 by an organisation called Lord of the Breakthrough Inc which does not on the face of it have any connection with any of the goods or services of interest to the Applicant or the Opponent.

The fourth and final attachment referred to in the Nguyen declaration is a copy of the flyer said to be “used in periodic advertising campaigns” (“the Flyer”) and which is reproduced below:

Mr Kell made the following observations in relation to Mr Nguyen’s evidence:

·that Mr Nguyen himself “refers to [the Trade Mark] as being ‘iFoneline’” [10] and that, “[t]his is consistent with how the mark would be regarded by members of the public.”  That is, the third letter of the Trade Mark, although stylised, would be regarded as, and pronounced as, the letter “o” and thus “both visually and aurally, the mark would be taken by members of the public as being “iFoneline”;

·that although Mr Nguyen indicates he considered the possibility of conflict with the Opponent’s Mark, he “nonetheless sought registration of the [Trade Mark] seemingly in the (false) belief that [the Opponent] may not have had rights to the iPhone trade mark in Australia” and that “[s]uch belief and conduct…constitutes, relevantly, an admission – namely, as to the extreme closeness of the marks and a reason for the Applicant, absent its apparent false belief, to be concerned in relation to same”;

·that “an apparent motivating factor” in seeking registration “was a belief…that ‘iFoneline’ was an ‘internet telephone service’ and not a brand of a ‘mobile digital device’” and that “this wholly ignores…[the Opponent’s registration 1186456] for services in Class 38 that cover VoIP services”;

·that no weight can be given to the Survey because, inter alia, there is no information provided regarding who conducted it, what questions were asked and the type and number of persons surveyed;

·that the “suggestion…that persons would pronounce the [Trade Mark] as ‘if one line’ (or, indeed, ‘ifo one line’) is, with respect, disingenuous and not credible” and that “[o]n no reasonable view, would the [Trade Mark] be pronounced in such a fashion”; and

·that the fact the [Trade Mark] is referred to by Mr Nguyen and in the Flyer in the form “iFoneline” is “clearly suggestive of the Opponent’s well known iPhone product and brand” and is “also suggestive of the usage adopted in respect of other well known trade marks owned by the Opponent, including ‘iPod’, ‘iMac’, ‘iTunes’, ‘iMovie’, ‘iPad’ and the like”.  Accordingly, “the inference that the Applicant intended to trade off the Opponent’s reputation in the iPhone trade mark is inescapable”.

[10] I mention that Mr Nguyen also refers to the Trade Mark once in his declaration as “IFONELINE”, but that he never refers to it as a stylised trade mark.  I note that further examples of such usage can be seen in the Flyer reproduced above.

Having made those observations on Mr Nguyen’s evidence and submissions, Mr Kell went on to argue that the Trade Mark was deceptively similar to the Opponent’s Mark for, (inter alia ), the following reasons:

·     Given the stylized “o” in the Trade Mark is likely to be seen and pronounced by members of the public simply as the letter “o”, it “does not add significantly to the identity of the [Trade Mark]”;

·     The Trade Mark is “aurally very similar” to the Opponent’s Mark and aural similarity may be considered sufficient for a finding of deceptive similarity even in a case where such a finding might not be made based purely on the visual aspect of the marks concerned.[11]  Moreover, said Mr Kell, aural use is likely to be significant “within the context of telephonic services and the internet…including in the form of radio and internet-aural advertisements and telephone enquiries and orders”;

·     Noting that in assessing deceptive similarity “regard is properly to be had to “the essential feature” of each trade mark,[12] Mr Kell pointed out that the Trade Mark, considered aurally, wholly incorporated the Opponent’s Mark (and thus incorporated its essential feature);

·     Moreover, this aural equivalent of the Opponent’s Mark was the first element of the [Trade Mark], long considered to be the most important for the purposes of distinguishing trade marks and the element most likely to be recalled by consumers[13];

·     The Applicant had effectively done no more than add the suffix “line” to the Opponent’s Mark, which suffix, “in the context of telephonic services”, is effectively descriptive and which accordingly “does not add significantly to the identity of the [Trade Mark]”; and

·     The fact that there was no evidence of actual confusion in this case was not significant, not only because such evidence was notoriously difficult to obtain, but also because the Applicant had in any event “filed no meaningful evidence as to the extent of its claimed use of the [Trade Mark], which may be presumed to be minimal”.[14]

[11] Citing Perram J in Solahart Industries Pty Ltd v Solar Shop Pty Ltd (2011) 92 IPR 165 (at [40]).

[12] Citing Windeyer J in Shell Company of Australia Ltd v Esso Standard Oil (Australia) Ltd (1963) 109 CLR 407; (1961) 1b IPR 523 at CLR 415: IPR 528 and De Cordova v Vick Chemical Co (1951) 68 RPC 103; 1b IPR 496 per Lord Radcliffe at RPC 106; IPR 498.

[13] Citing London Lubricants (1920) Ltd’s Appn (1925) 42 RPC 264 per Sargant LJ at 279.

[14] Citing Kimberley-Clark Worldwide, Inc v Goulimis (2008) 78 IPR 612 at [44] per Jagot J.

In summary, submitted Mr Kell:

The [Trade Mark], in effect, incorporates the whole of the [Opponent’s Mark], at least aurally, and simply adds the suffix “line” which, in context, does not add significantly to the identity of the mark. On orthodox analysis, the ground of opposition under s 44(2) is established.

Finally, Mr Kell went on to note that “it is beyond argument that the Opponent’s iPhone trade mark is well known in Australia” and:

On an orthodox analysis, it may typically not be necessary, or perhaps even appropriate, to consider issues of reputation in the context of s 44. However the law on this aspect is still evolving. … [I]f regard may properly be had to the Opponent’s substantial reputation in the iPhone trade mark, there is authority to the effect that this can reinforce, and assist in, a finding of deceptive similarity. See eg Intel Corporation v Tynan (2003) 59 IPR 538 at [46] to [48][15]; McDonald’s Corporation v Future Enterprises Pte Ltd [2007] ATMO 22 at [19].[16]  Similarly, in Kimberley-Clark Worldwide, Inc v Goulimis (2008) 78 IPR 612 at [43][17] Jagot J held that the dominant reputation of the HUGGIES trade marks in the market for baby-toddler products, particularly personal care products, supported the conclusion that the Opponent, Kimberley-Clark, had made out the ground of deceptive similarity under s 44(2).

[15] INTELSEA for “Software development and retailing” and INTEL.

[16] MacCoffee for goods in Class 30 including coffee.

[17] “HUGGIE” MUMMY for “Direct selling of baby-toddler’s (sic) toys, videos, CD’s, books, games and accessories” and HUGGIES.

I am in broad agreement with Mr Kell’s assessment of the Applicant’s evidence and of Mr Nguyen’s submissions and I agree with Mr Kell’s submission that the Trade Mark is deceptively similar to the Opponent’s Mark.  As was said by the House of Lords in the well known case Saville Perfumery Ltd v June Perfect Ltd[18], if a “mark comes to be remembered by some feature in it which strikes the eye and fixes itself in the recollection” then confusion is likely if another trader in essentially the same goods or services adopts that feature in its own trade mark.  I agree, too, that the stylization of the letter “o”, the minor misspelling of the word “phone” and the addition of the essentially non-distinctive word “line” to the Trade Mark are not on the face of it sufficient to significantly reduce the risk of confusion amongst potential consumers.  In this regard I note the words of Lord Radcliffe at RPC 106; IPR 499 in De Cordova v Vick Chemical Co (1951) 68 RPC 103; 1b IPR 496:

…that in most persons the eye is not an accurate recorder of visual detail, and that marks are remembered rather by general impressions or by some significant detail than by any photographic recollection of the whole.

[18] (1941) 58 RPC 147 (at 162).

Moreover, Mr Kell is right to point out that aural similarity may in itself be sufficient as a basis for finding two trade marks deceptively similar. It is perhaps germane to note in this regard that s 7(2) of the Act explicitly states:

To avoid any doubt, it is stated that, if a trade mark consists of the following, or any combination of the following, namely, any letter, word, name or numeral, any aural representation of the trade mark is, for the purposes of this Act, a use of the trade mark.

Indeed, in holding the trade marks  and TIVO deceptively similar[19] Dodds-Streeton J observed earlier this year that: [20]

While the identical letters “-ivo” in each mark creates some visual similarity, I do not think the marks deceptively similar on a visual comparison, as they include a visually different initial letter and, as Vivo is a device mark, are differently represented.  Nevertheless, in the context and circumstances of sale, the difference in appearance would not preclude the likelihood of confusion, as in my view, in a substantial proportion of cases, the aural effect and impression of the mark are likely to be of greater significance that (sic) the visual effect and impression.

[19] In relation to “apparatus for use in audio visual communications” in Class 9 and “transmission of data by audio-visual apparatus” in Class 38 and, inter alia, “communication devices” in Class 9 and “transmission of cable television and interactive audio and video services” in Class 38 respectively.

[20] Tivo Inc v Vivo International Corporation Pty Ltd [2012] FCA 252 (19 March 2012) at [171].

I mention that I also agree with Mr Kell that no significant weight can be given to the Survey relied on by the Applicant given the deficiencies outlined by Mr Kell such as the absence of information concerning the sample size and the methodology employed.  I likewise do not think it significant in this case that the Opponent has not pointed to any instances of actual confusion given, as Mr Kell pointed out, there is no evidence before me as to the nature, duration or extent of any use the [Trade Mark] may have enjoyed.

I think, too, that Mr Kell is right to highlight Mr Nguyen’s apparently naïve belief that the Opponent did not have relevant rights to the trade mark iPhone in Australia, particularly given Mr Nguyen’s statements that this was a significant factor in the Applicant’s applying to register the Trade Mark.  On the face of it this (mistaken) belief suggests Mr Nguyen and the Applicant in fact acknowledge, as Mr Kell put it, “the extreme closeness of the marks and a reason for the Applicant, absent its apparent false belief, to be concerned in relation to same”.  Certainly Mr Nguyen’s statement that “[s]ince inception, iFoneline has been promoted as an internet telephone service and not in any way promoted as a brand of a mobile digital device” and that for this reason “it is without ground to assume that the use of [the] iFoneline trade mark would be likely to deceive or cause confusion”, does indeed appear to “wholly ignore”, as Mr Kell submitted, the fact that the Class 38 specification of registration 1186456 in fact covers such services.  There is thus merit in Mr Kell’s observation that, “Again, as justification for the filing of its application the Applicant seemingly relied upon a differentiating factor that, upon analysis, was not justified.”

In summary, my finding after what Mr Kell characterized as an “orthodox analysis” is that the Trade Mark is deceptively similar to the Opponent’s Mark. I have already noted that the Trade Mark covers services the same as, or similar to, those covered by the Opponent’s registration 1186456. The Opponent has accordingly established its s 44 ground of opposition.

Having so found, it is not strictly necessary to discuss whether the fame of the Opponent’s iPhone trade mark might also be a contributing factor in establishing the Opponent’s s 44 ground. Nonetheless, I do acknowledge that by majority the Full Court in Woolworths (French and Tamberlin JJ; Branson J dissenting) expressly approved the taking of reputation into account when assessing deceptive similarity under s 44 in circumstances “where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken” since “it would be artificial to separate out the physical features of the mark from the viewer’s perception of them”[21].  Applying this principle in Woolworths, the Court did not consider the trade mark WOOLWORTHS METRO to be deceptively similar to the mark METRO in view of the “notorious familiarity” amongst Australian consumers of the name “Woolworths”.

[21] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, per French J at 431.

1. I mention that subsequent decisions of the Federal Court have indicated that to the extent the fame of a mark (or some part of a mark) has any relevance to assessing deceptive similarity this should be limited to consideration of its possible impact on consumers’ imperfect recollection of it.  In this regard, as mentioned by Mr Kell, Jagot J in Kimberley-Clark Worldwide, Inc v Goulimis (2008) 78 IPR 612 considered the fame of the opponent’s trade mark HUGGIES for particular goods “supported” a finding that the mark “HUGGIE” MUMMY was deceptively similar , saying at [43]:

   [43] The opponent supported its submissions on this issue by market research showing the notoriety of the opponent’s marks (each of which includes the word HUGGIES) in respect of baby-toddler personal care items. The relevance of reputation to deceptive similarity has been described as relating only to the assessment of the “nature of a consumer’s imperfect recollection of a mark” but no more: Crazy Ron’s[22] at [90] citing CA Henschke & Co v Rosemount Estates Pty Ltd (2000) 52 IPR 42 ; [2000] FCA 1539 at [52]. The dominant reputation of the HUGGIES marks in the market for baby-toddler products (particularly personal care products) supports the conclusion that the opponent has made out the ground of deceptive similarity under s 44(2).

   [22] Crazy Ron’s Communications Pty Ltd v Mobileworld Communications Pty Ltd (2004) 61 IPR 212.

2. As mentioned earlier I accept that the Opponent’s iPhone trade mark was very well known in Australia as at the Priority Date in relation to, in particular, the iPhone Device and that the trade mark enjoyed the kind of notoriety or familiarity amongst Australian consumers that the Court in Woolworths would have had in mind.  While it was the notorious familiarity of the name “Woolworths” which led the Court to conclude the marks WOOLWORTHS METRO and METRO were not deceptively similar, however, such is not the case in the present opposition in my view.  Rather, what may be characterised as the ubiquitous nature of the iPhone mark would in my view tend to heighten the risk of relevant deception or confusion amongst Australian consumers as between the Trade Mark and the Opponent’s Mark.

3. To conclude, I consider the Opponent has established its s 44 ground and that this would have been the case whether or not I expressly took the undoubted fame of the Opponent’s iPhone trade mark into account.

   Decision

4. Section 55 of the Act provides:

   Unless the proceedings are discontinued or dismissed, the Registrar
   must, at the end, decide:

   (a)  to refuse to register the trade mark; or
                 (b)  to register the trade mark (with or without conditions or  limitations) in respect of the goods and/or services then
     specified in the application;

   having regard to the extent (if any) to which any ground on which the
   application was opposed has been established.
   Note: For limitations see section 6.

5. I have found the opposition to be successful on the ground raised pursuant to s 44 of the Act. I accordingly refuse to register trade mark application number 1316151.

   Costs

6. In the event that it prevailed, Mr Kell requested an award of costs in the Opponent’s favour.  As the successful party, the Opponent is entitled to its costs and I accordingly award costs against the Applicant as per Schedule 8 of the Trade Marks Regulations 1995.

   Michael Kirov
   Hearing Officer
   Trade Marks Hearings
   19 October 2012