Apple Inc v Macpro Computers (Aust) Pty Limited

[2010] FCA 1505

FEDERAL COURT OF AUSTRALIA

Apple Inc v Macpro Computers (Aust) Pty Limited [2010] FCA 1505

Citation:	Apple Inc v Macpro Computers (Aust) Pty Limited [2010] FCA 1505
Parties:	APPLE INC v MACPRO COMPUTERS (AUST) PTY LIMITED
File number(s):	NSD 176 of 2009
Judge:	EMMETT J
Date of judgment:	6 December 2010
Legislation:	Trade Marks Act 1995 (Cth) ss 55 and 56
Date of hearing:	6 December 2010
Place:	Sydney
Division:	GENERAL DIVISION
Category:	No catchwords
Number of paragraphs:	6
Counsel for the Applicant:	S.C.G. Burley SC and A.D.B. Fox
Solicitor for the Applicant:	Clayton Utz
Counsel for the Respondent:	J. Beaumont
Solicitor for the Respondent:	Blake Dawson

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 176 of 2009

BETWEEN:	APPLE INC Applicant
AND:	MACPRO COMPUTERS (AUST) PTY LIMITED Respondent

JUDGE:	EMMETT J
DATE OF ORDER:	6 DECEMBER 2010
WHERE MADE:	SYDNEY

THE COURT ORDERS BY CONSENT THAT:

1.The appeal from the decision of the delegate of the Registrar of Trade Marks given on 12 February 2009 in respect of trade mark application No. 1114115 be allowed.

2.The decision of the Registrar of Trade Marks be set aside insofar as it relates to the refusal to allow registration of trade mark application No. 1114115 in respect of the following goods and services in class 9: 'computers; computer hardware, computer software; computer peripherals; notebook computers; laptop computers; tablet computers; computer servers; handheld computers; mobile computers; hard drives; audio speakers; speakers for computers; electronic notepads; magnetic data carriers; microprocessors; memories boards; monitors; displays; keyboards; computer input devices; computer cables; modems; printers; parts and accessories for all the aforesaid goods'.

3.The trade mark application No. 1114115 proceed to registration without conditions or limitations.

4.There be no order as to costs.

Note:Settlement and entry of orders is dealt with in Order 36 of the Federal Court Rules.
The text of entered orders can be located using Federal Law Search on the Court’s website.

IN THE FEDERAL COURT OF AUSTRALIA
NEW SOUTH WALES DISTRICT REGISTRY
GENERAL DIVISION	NSD 176 of 2009

BETWEEN:	APPLE INC Applicant
AND:	MACPRO COMPUTERS (AUST) PTY LIMITED Respondent

JUDGE:	EMMETT J
DATE:	6 DECEMBER 2010
PLACE:	SYDNEY

REASONS FOR JUDGMENT

1. The applicant, Apple Inc (Apple), applied for registration under the Trade Marks Act 1995 (Cth) (the Act) of a series trademark, Macpro and Mac Pro, in respect of certain goods and services in class 9.  The application, which was given number 1114115, was opposed by the respondent, Macpro Computers (Aust) Pty Limited (Macpro).  The notice of opposition was filed in the Trademarks Office on 16 August 2006.

2. On 12 February 2009, a delegate of the Registrar of Trademarks determined that the opposition was established with respect to certain goods within class 9.  However, the delegate determined that the mark should proceed to registration with respect to certain other goods within class 9.  No other limitations or conditions were imposed on the registration as part of the opposition decision. 

3. On 4 March 2009, Apple filed a notice of appeal in respect of the decision of the delegate under s 56 of the Act. That appeal was listed for hearing today. However, the parties have reached agreement in relation to the proceeding and Apple now invites the Court to make orders by consent. The effect of the orders that have been proposed is that Apple’s appeal will be allowed, that the decision of the delegate be set aside, so far as it relates to the refusal to allow the mark to proceed to registration with respect to some goods and services in class 9, that the mark proceed to registration without conditions or limitations. The parties have agreed that there be no order as to the costs of the proceeding. The Registrar of Trademarks has been notified of the terms of the proposed orders and of the fact that the proceeding is listed for hearing today. The Registrar has indicated that no objection is taken to the form of the proposed orders.

4. The decision of the Registrar, or the delegate of the Registrar, was made under s 55 of the Act, which provides that, unless proceedings are discontinued or dismissed, the Registrar must, after hearing the parties, either decide to refuse to register a trademark or to register the trademark with or without conditions or limitations in respect to the goods and/or services specified in the application.

5. Section 56 provides that either the applicant or the opponent may appeal to the Court from a decision of the Registrar under s 55. Where there is an appeal from a decision of the Registrar to refuse to grant a trademark, but at the hearing of the appeal there is no evidence tendered in support of any ground of opposition, the appeal should be allowed if there is no opposition to that course. In such circumstances the decision of the Registrar should be set aside and the trademark application should proceed to registration.

6. When the matter was called on today, Apple invited the Court to make orders in terms of short minutes of order that have been signed on behalf of the solicitors for both Apple and Macpro.  Macpro was represented at the hearing.  Counsel for Macpro confirmed the consent of Macpro to the proposed orders.  No evidence was proffered by either party in relation to the appeal.  In those circumstances I consider that it is appropriate to make orders in terms of the short minutes of order propounded by the parties. 

I certify that the preceding six (6) numbered paragraphs are a true copy of the Reasons for Judgment herein of the Honourable Justice Emmett.

Associate:

Dated:        31 January 2011