Apple Inc. v Experienced Apples Pty Ltd
[2013] ATMO 84
•25 October 2013
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Apple Inc. to registration of Australian trade mark application 1463080 (35) – - filed by Experienced apples Pty Ltd
Delegate: | Michael Kirov |
Representation: | Opponent: Gabriella Rubagotti of Counsel, instructed by Robert Arnold of Baker & McKenzie, Attorneys & Solicitors. Applicant: No appearance or submissions. |
Decision: | 2013 ATMO 84 Section 52 opposition: s 60 considered – confusion likely because of reputation of Opponent’s trade marks – opposition established and registration refused. Costs awarded against the Applicant. |
Background
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 Experienced apples Pty Ltd (“the Applicant”):
Application Number: 1463080
Trade Mark: (“the Trade Mark”)
Priority Date: 3 December 2011 (“the Priority Date”)
Services:Class 35: Office machines and equipment rental
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. These services include, inter alia, shop front and internet-based retail and wholesale services, the provision of third party digital content and applications, the provision of technology related education and support services and the financing, leasing and “loan” of computers and computer related devices and peripherals. According to its evidence, “In (sic) 20 August 2012, [the Opponent] had a market value of over US$620 billion, making it the most valuable company of all time…”
The Applicant is an Australian company based in Nerang, Queensland which, (according to the records of the Australian Securities and Investments Commission), was incorporated on 10 June 2004 under the name “Cash on Tap Pty Ltd”. Its name was subsequently changed to “Aussie Payday Loans Pty Ltd” before adoption of its current name. Although the Applicant has filed no evidence, or otherwise actively participated in these proceedings, the Opponent has included in its evidence screenshots from the Applicant’s website ( downloaded on 1 March 2013 which indicate that the Applicant’s business centers on the rental of “the latest iPads, iPods and iPhones”, being very well known products manufactured and supplied by the Opponent.
At the heart of the present opposition is the claimed similarity of the Trade Mark to marks containing or consisting of the word “apple”, and/or to the apple device essentially conforming to the devices shown below[1] (referred to collectively hereafter as “the Apple Logo”), which had been used and/or registered by the Opponent in Australia as at the Priority Date:
[1] The Opponent’s evidence indicates that the device has been used in a variety of colours and shadings in relation to its goods and services over the past four decades.
Acceptance of the opposed application for possible registration was advertised in the Australian Official Journal of Trade Marks on 22 March 2012 and the Opponent filed its Notice of Opposition (“the Notice”) on 21 June 2012.
I heard the matter as a delegate of the Registrar of Trade Marks on 17 October 2013 in Sydney. The Applicant did not appear and was not represented at the hearing, nor did it file any written submissions. Gabriella Rubagotti of Counsel, instructed by Robert Arnold of Baker & McKenzie, Attorneys & Solicitors, appeared for the Opponent. Ms Rubagotti’s oral submissions were supplemented by written submissions emailed to both the Applicant and me on 3 October 2013.
Grounds of Opposition and Onus
The Notice lists some fourteen grounds corresponding to various provisions of the Act. The Opponent’s attorneys nevertheless confirmed via email on 3 October 2013 that the Opponent would only be pressing those grounds based on sections 42, 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 five grounds. As will become apparent, I have only found it necessary to address the Opponent’s s 60 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.
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
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.[2]
[2] 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], Fry Consulting Pty Ltd v Sports Warehouse Inc (2012) 94 IPR 551 per Dodds-Streeton J at [13] and DC Comics v Cheqout Pty Limited (2013) 101 IPR 334 per Bennett J at [13].
The Evidence
As evidence in support of its opposition the Opponent filed and served a Declaration by Thomas R. La Perle made on 12 March 2013, with Annexures TRL-1 to TRL-46.
As mentioned, the Applicant has not filed or served any evidence.
Discussion
Section 60
The ground based on section 60 of the Act is indicated in the Notice as follows:
Use of the opposed trade mark would be likely to deceive or cause confusion because of the reputation of another trade mark where such reputation was acquired in Australia before the priority date of the opposed trade mark
Section 60 of the Act itself is reproduced below:
Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a) another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b) because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
Note: For priority date see section 12.
As indicated, the Opponent relies on its use of trade marks containing or consisting of the word mark APPLE and/or the Apple Logo (referred to collectively hereafter as “the Opponent’s Apple Marks”) to underpin its s 60 ground. I am satisfied from the evidence that as at the Priority Date the Opponent had continuously used these trade marks for more than 30 years in relation to its goods and services.
What needs to be considered for the purposes of s 60 is the notional use the Applicant might make of the Trade Mark in relation to its designated services of interest. The issue is whether such use would be likely to deceive or cause confusion in light of the reputation of the Opponent’s Apple Marks as at the Priority Date.
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] in relation to the meaning of the terms “deceive” and “cause confusion”:
[39] …No intention to deceive or cause confusion is required: Re Bali Brassiere 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.
It is well established that the kind of confusion contemplated by s 60 need not lead to actual purchase of the goods or services covered by the impugned trade mark. As Heerey J put it in Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495[3] at 501:
A probability of confusion, if it is real, is sufficient even though the confusion may be unlikely to persist up to the point of, and be a factor in, inducing actual sales: Southern Cross at CLR 495. There may be confusion or deception in the minds of persons to whom the mark is addressed, even if actual purchasers will not ultimately be deceived: Re Hack's Application (1940) 58 RPC 91 at 103–4.
[3] His Honour’s remarks were made in the context of s 28 of the Trade Marks Act 1955, but are no less applicable to s 60 of the current Act. The decision itself was overturned on appeal to the Full Federal Court (Wilcox, Tamberlin and Merkel JJ) (1998) 45 IPR 393, but not on this point.
In Registrar of Trade Marks vWoolworths Ltd (1999) 45 IPR 411 at [50] French J (as he then was) highlighted the following further matters concerning confusion, also based on principles formulated by Kitto J in Southern Cross:
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.
…
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.
As regards the reputation of the Opponent’s Apple Marks as at the Priority Date, I am in no doubt, based on Mr La Perle’s evidence (and confirmed, I might say, by my own estimation as a consumer), that the trade marks would be very familiar to a significant number of Australian consumers. Briefly put, the evidence confirms that the Opponent has consistently, indeed invariably, used both the APPLE word mark and the Apple Logo on, or in close relation to, its entire range of goods and services since their first use in the 1970s and that the goods and services concerned, particularly in the ten years or so leading up to the Priority Date, have enjoyed remarkable publicity, popularity and sales both in Australia and worldwide.
Moreover, the extensive advertising and promotion of the Opponent’s goods and services by reference to the relevant trade marks as detailed by Mr La Perle have no doubt been as important to the Opponent’s apparent success in “developing a high level of brand awareness and consumer loyalty” as the qualities of the goods and services themselves. In this regard Mr La Perle notes, inter alia, that:
[The Opponent’s] extensive promotional efforts have contributed towards [the Opponent’s] success in achieving an impressive sustained sales growth since 2001 of 29% per year. [The Opponent’s] total advertising expenditure since 1994 has exceeded US$3,000,000,000. [The Opponent’s] total advertising expenditure was $1.0 billion, $933 million and $691 million for 2012, 2011 and 2010, respectively.[4]
[4] These figures are for advertising expenditure on a worldwide basis but I am satisfied from Mr La Perle’s declaration that correspondingly high expenditure was also incurred in Australia.
Mr La Perle goes on to detail the nature and extent of the Opponent’s “advertising and brand-building initiatives” in Australia through print, internet, television and outdoor advertising, through its Apple Store Retail Stores, through exposure at industry conferences and symposia, through product placement and through leveraging the not-insubstantial interest and coverage generated by television and news outlets. I do not propose here to list or elucidate the specific activities and publications attested to by Mr La Perle, but would simply conclude by stating that I accept that the Opponent’s Apple Marks clearly had the kind of reputation contemplated by s 60 at the Priority Date in relation to the goods and services mentioned in paragraph 2 above.
I am also satisfied that in light of that reputation use of the Trade Mark for the services designated by the opposed application, namely the rental of office machines and equipment, would at the very least result in a significant number of Australian consumers wondering or being left in doubt as to whether the services were being offered by, or were otherwise connected with, the Opponent. Indeed, as mentioned in paragraph 3 above, the Opponent’s evidence shows that the use being made of the Trade Mark on the Applicant’s website in March this year was in fact in relation to rental of the Opponent’s well known iPad, iPod and iPhone products (only).
Neither the word “apple” nor a stylised representation of an apple has of course any inherent significance in relation to any of the Opponent’s goods or services or to the services covered by the opposed application. The Opponent’s Apple Marks are obviously purely fanciful in relation to such goods and services on the face of it and any association in the minds of the public between apples and computers, or apples and office equipment generally, is only because of the Opponent’s longstanding use of its Apple trade marks in relation to its goods and services. As Ms Rubagotti highlighted, it is accordingly apparent on the face of it that the Applicant would have incorporated a combination of the word “apple” and a slight variation of the Apple Logo as the principal features of the Trade Mark in order to suggest to consumers that there was some connection between its services and the Opponent.
In this regard Ms Rubagotti reminded me of the well known words of McTiernan and Dixon JJ in Australian Woolen Mills Ltd v FS Walton & Co Ltd (1937) 58 CLR 641 at 657:
… The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency. In a question how possible or prospective buyers will be impressed by a given picture, word or appearance, the instinct and judgment of traders is not to be lightly rejected, and when a dishonest trader fashions an implement or weapon for the purpose of misleading potential customers he at least provides a reliable and expert opinion on the question whether what he has done is in fact likely to deceive. Moreover, he can blame no one but himself, even if the conclusion be mistaken that his trade mark or the get-up of his goods will confuse and mislead the public …
Moreover, I agree with Ms Rubagotti that in the context of the designated services the inclusion of the word “experienced” in the Trade Mark is not sufficient to obviate the likelihood of confusion. The word “experienced” obviously has descriptive or laudatory significance in relation to services of any kind, but it also carries the suggestion, to my mind, that the office machines and equipment offered for rental are likely to be used or reconditioned items. As it happens this is consistent with the description of the Opponent’s iPads, iPods and iPhones being offered for rent on the Applicant’s website as shown in the Opponent’s evidence. It is the word “apple(s)”, reinforced by the apple Device, which is the most memorable word in the Trade Mark as a whole and, as was said by the House of Lords in Saville Perfumery Ltd v June Perfect Ltd[5], 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.
[5] (1941) 58 RPC 147 (at 162).
I would also note in passing that the layout, fonts and colour scheme used on the Applicant’s website as shown in the Opponent’s evidence appear to me to be a very close imitation of those used on the Opponent’s websites at < and < downloaded pages from which are also included as Annexures to the La Perle declaration. I mention that given this apparently deliberate attempt at imitation the fact that there is also a “disclaimer” on the homepage of the Applicant’s website stating, “please note: We do not claim to have any affiliation with the apple company and are by (sic) no way associated with the apple company” does seem somewhat disingenuous. However the presence of the disclaimer is in any event irrelevant to my consideration of the Opponent’s s 60 ground, which as mentioned is concerned with the notional use the Applicant might make of the Trade Mark.
The final matter I would highlight concerns the similarity of the Applicant’s designated services to the goods and services to which the reputation of the Opponent’s Apple Marks extends. Strictly speaking such similarity is not a requirement in order to make out a case under s 60; all that is necessary is that an applicant’s use be likely to cause confusion or deception in light of the reputation of the earlier mark(s), no matter how that reputation may have been achieved. In the present matter, nevertheless, the likelihood of confusion or deception is on the face of it all the more heightened by the fact that the Opponent’s Apple Marks have for over 30 years been used in relation to personal computers and related goods (including printers, scanners and other computer peripherals). Such goods would obviously fall within the general description of “office machines and equipment” used in the specification of the opposed application. Moreover, as Ms Rubagotti highlighted in her submission, pages from the Opponent’s website annexed to Mr La Perle’s declaration show that the Opponent also advertises and promotes the leasing and “loaning” of its computers and related products to the public, these being essentially the same services as those covered by the opposed application.
To conclude, I find that the Opponent has established its s 60 ground.
Decision
Section 55(1) of the Act relevantly provides that, 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.
I have found the opposition to be successful on the ground raised pursuant to s 60 of the Act. I accordingly refuse to register trade mark application number 1463080.
Costs
In the event that it prevailed, Ms Rubagotti requested an award of costs in the Opponent’s favour. As the successful party, the Opponent is so entitled 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
25 October 2013
11
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