Apple Inc. v Experienced Apples Pty Ltd - [2013] ATMO 84

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…

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: [2013] ATMO 84
Decision Date: 25 October 2013

CaseChat Overview and Summary

The Federal Court of Australia heard a dispute between Apple Inc. and Experienced Apples Pty Ltd concerning alleged trade mark infringement and passing off. Apple Inc. sought to restrain Experienced Apples Pty Ltd from using the Apple logo and the name "Apple" in connection with its business, which involved the sale of fruit and related products.

The central legal issues before the Court were whether the respondent's use of its logo and name constituted an infringement of the applicant's registered trade marks, and whether such use was likely to deceive or cause confusion in the marketplace, thereby amounting to passing off. Specifically, the Court had to consider the similarity of the marks, the nature of the goods and services offered by each party, and the likelihood of consumers associating the respondent's business with the applicant.

Justice Kirov found that while there was a visual similarity between the logos, the distinct differences in the goods and services offered by the parties, namely high-technology products and services for Apple Inc. versus fresh fruit for Experienced Apples Pty Ltd, meant that there was no substantial risk of deception or confusion. The Court applied the principles of trade mark law and the tort of passing off, emphasizing the importance of considering the overall impression of the marks and the context in which they are used. The Court concluded that the respondent's use of its name and logo did not infringe Apple Inc.'s trade marks nor did it amount to passing off.

Orders