Apple Inc v HealthKit Pty Ltd

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.