Apple Inc. v Cleaar Marketing Australia Pty Ltd

Apple Inc. (the Opponent) opposed the application by Cleaar Marketing Australia Pty Ltd (the Applicant) for the trade mark "iFoneline" on the grounds of section 44 of the *Trade Marks Act 1995* (Cth). The Opponent relied on its registered trade marks containing the element "IPHONE" for telecommunication and related services. The Applicant sought to register "iFoneline" for similar services, with a priority date of 20 August 2009.

The primary legal issue before the court was whether the Applicant's proposed trade mark "iFoneline" was substantially identical with or deceptively similar to the Opponent's registered "IPHONE" trade marks, for similar or closely related goods and services, such that the application should be rejected under section 44(2) of the Act. The court was required to consider the evidence presented by both parties regarding the distinctiveness of the marks and the potential for confusion in the marketplace.

The court considered the Applicant's evidence, including a declaration from its director, which asserted that the "iFoneline" trade mark was chosen based on an understanding that it would not conflict with existing brands. This assertion was supported by references to news articles concerning litigation between Cisco and Apple over the "iPhone" trade mark in the United States, and by internal surveys conducted by the Applicant. However, the court noted that the US litigation had been settled prior to the Applicant's trade mark application, and that the settlement allowed both parties to use the "iPhone" trade mark globally. The court also found the Applicant's surveys to be of limited evidential value.

The court found that the Opponent's "IPHONE" trade mark, particularly in relation to telecommunication access services, was well-known and had a significant priority date. The court concluded that the Applicant's proposed mark "iFoneline" was deceptively similar to the Opponent's registered mark "IPHONE" for the purposes of section 44(2) of the Act, given the similarity in appearance, sound, and the nature of the services offered. Consequently, the court ordered that the Applicant's trade mark application be rejected.