Apple Inc v HealthKit Pty Ltd - [2016] ATMO 112

Trade Mark Regulations 1995

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

Re:Opposition by Apple Inc to admission of information under regulation 21.19 of the Trade Mark Regulations 1995 in s52 proceedings re: trade mark application 1626348 (9, 35, 36, 41, 42, 44, 45) - HEALTHKIT - filed in the name of HealthKit Pty Ltd.

Delegate:	Iain Campbell Thompson
Representation:	Opponent: AR Lang of Counsel instructed by Robert Arnold of Baker & Mackenzie. Applicant: Tom Cordiner, Senior Counsel, instructed by Hugh Maclaren of Meerkin & Apel, Lawyers.
Decision:	2016 ATMO 112 *Trade Marks Regulations 1995, opposition to request that the Registrar consider information under the provisions of regulation 21.19; regulation 21.19 not to be read in conjunction with regulation 5.15 – Registrar’s discretion is unfettered; information relevant to proceedings - Registrar will consider regulation 21.19 information. Regulation 5.19 directions that:* Oppositions to the First Trade Mark and the Second Trade Mark be heard together; Any evidence filed by Opponent in relation to the Second Trade Mark be considered by Registrar as regulation 21.19 information in relation to the First Trade Mark; Opponent to inform Registrar within two weeks if it wishes to submit further regulation 21.19 information in relation to First Trade Mark.
Costs in this matter to be borne by both parties.

Background

This matter arises out of the fact that the parties involved are both opponents to the registration of each other’s identical trade mark. Apple Inc, (‘the Opponent’) opposes registration of the trade mark which appears below:

Application No: 1626348

Owner: Healthkit Pty Ltd

Priority Date: 3 June 2014

Goods/Services: Various in Classes 9, 35, 36, 41, 42, 44, and 45.

Trade Mark: HealthKit (‘the First Trade Mark’)

Endorsements: Provisions of subsection 44(4) and/or Reg 4.15A(5) applied.

HealthKit Pty Ltd (‘the Applicant’), for its part, opposes the registration of the trade mark which appears below:

Application No: 1637556

Owner: Apple Inc

Filing Date: 29 July 2014

Convention Claim: 4 February 2014 – 47870 – Trinidad and Tobago. (‘the Convention Date’)

Goods: Various in Classes 9 and 14.

Trade Mark: HEALTHKIT (‘the Second Trade Mark’)

The solicitor acting for the Applicant was under the mistaken beliefs that all:
·evidence filed by the Applicant in relation to the opposition to registration of the Second Trade Mark (‘the Second Proceedings’) would be considered by the Registrar or her delegate in relation to the opposition to registration of the First Trade Mark (‘the First Proceeding’);
·information on the application file of the First Trade Mark would be considered by the Registrar or her delegate while making of the decision on the substantive matter involving the First Proceeding.
The solicitor, being under these beliefs, did not arrange to file any evidence in relation to the First Proceedings within the time allowed by the Regulations.
On discovering this mistake, the solicitor requested that the evidence filed by the Applicant in relation to the Second Proceedings be considered by the Registrar as information in terms of regulation 21.19 of…

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: [2016] ATMO 112
Decision Date: 6 December 2016

CaseChat Overview and Summary

This matter concerns cross-oppositions between Apple Inc. (the Opponent) and HealthKit Pty Ltd (the Applicant) regarding identical trade marks. The Applicant sought to have evidence filed in opposition to the registration of the Opponent's trade mark considered as regulation 21.19 information in relation to its own opposition to the registration of the Applicant's trade mark. This request arose from a mistaken belief by the Applicant's solicitor that evidence filed in one proceeding would automatically be considered in the other.

The primary legal issue before the delegate of the Registrar was whether to permit the Applicant's evidence, filed in separate proceedings, to be treated as regulation 21.19 information in the first proceeding. Ancillary issues included determining how and when the Opponent would be afforded an opportunity to respond to this information, and whether the two opposition proceedings should be heard concurrently.

The delegate considered submissions from both parties. The Applicant argued that its solicitor's mistake necessitated the consideration of the evidence, while the Opponent opposed the request. The delegate acknowledged the unusual nature of the request, noting that such matters are typically addressed at the substantive hearing. The delegate convened a hearing to consider the regulation 21.19 information and to issue directions regarding the Opponent's potential response and the appropriateness of a joint hearing.

The delegate directed that any evidence filed by the Applicant in relation to the second trade mark opposition be considered as regulation 21.19 information in relation to the first trade mark opposition. The Applicant was also required to inform the Registrar within two weeks if it wished to submit further regulation 21.19 information in relation to the first trade mark.

Orders

Orders of the court

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Background

Background to the litigation

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Evidence

Evidence Before The Court

Any evidence filed by Opponent in relation to the Second Trade Mark be considered by Registrar as regulation 21.19 information in relation to the First Trade Mark; Opponent to inform Registrar within two weeks if it wishes to submit further regulation 21.19 information in relation to First Trade Mark. This matter arises out of the fact that the parties involved are both opponents to the registration of each other’s identical trade mark. Apple Inc, (‘the Opponent’) opposes registration of the trade mark which appears below: HealthKit Pty Ltd (‘the Applicant’), for its part, opposes the registration of the trade mark which appears below: The solicitor acting for the Applicant was under the mistaken beliefs that all:·evidence filed by the Applicant in relation to the opposition to registration of the Second Trade Mark (‘the Second Proceedings’) would be considered by the Registrar or her delegate in relation to the opposition to registration of the First Trade Mark (‘the First Proceeding’);·information on the application file of the First Trade Mark would be considered by the Registrar or her delegate while making of the decision on the substantive matter involving the First Proceeding. The solicitor, being under these beliefs, did not arrange to file any evidence in relation to the First Proceedings within the time allowed by the Regulations. On discovering this mistake, the solicitor requested that the evidence filed by the Applicant in relation to the Second Proceedings be considered by the Registrar as information in terms of regulation 21.19 of the Trade Marks Regulations 1995 (‘the Regulations’) in relation to the First Proceedings.[1] The information comprises the following declarations:(a) Lachlan Harrison Wheeler made on 24 November 2015;(b) Lachlan Harrison Wheeler made on 12 February 2016; and,(c) Lachlan Harrison Wheeler made on 16 May 2016.[1] A chronology of these events is annexed to this decision. The Applicant also asks that the Registrar take into account in the First Proceedings the following declaration filed by the Applicant prior to acceptance of the First Trade Mark:(d) Alison Hardacre made on 26 November 2014 (‘the Hardacre Declaration’) filed during examination of the First Trade Mark. The Opponent has opposed these requests. While it is usual that the issue of what I will term ‘regulation 21.19 information’ be argued by parties at the hearing of the substantive matter, there are other issues in question here which are, to an extent, dependent on the outcome of the Registrar’s decision. The first is, if the Registrar’s decision is adverse to the Opponent how, and when, the Opponent be afforded the opportunity to respond to the regulation 21.19 information in the First Proceedings. The second is if it is appropriate that these two matters be heard together. Accordingly, a hearing was convened in Canberra on 7 November 2016 so that I, as a delegate of the Registrar, could hear the submissions of the parties in relation to the regulation 21.19 information and subsequently, if necessary, issue appropriate directions on behalf of the Registrar in relation to both any information the Opponent might wish to place before the Registrar and if a joint hearing of these matters may be appropriate. Mr AR Lang of Counsel, instructed by Robert Arnold of Baker & Mackenzie, represented the Opponent.Tom Cordiner, Senior Counsel, instructed by Hugh Maclaren of Meerkin & Apel, Lawyers, appeared for the Applicant.

Decision

Reasons for decision

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Ratio Decidendi

Legal Principle Established

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