Apple Inc. v Meracomm Pty Ltd - [2018] ATMO 154

TRADE MARKS ACT 1995

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

Re:Opposition by Apple Inc to registration of trade mark application 1760042 (9, 11) – apple juice - in the name of Meracomm Pty Ltd.

Delegate:	Nicole Worth
Representation:	Opponent: Gabriella Rubagotti of counsel, instructed by Baker & McKenzie law firm Applicant: written submissions prepared by Griffith Hack Patent & Trade Mark Attorneys
Decision:	2018 ATMO 154 Trade Marks Act 1995 (Cth) – opposition to registration under s 52 – reputation established in terms of s 60 – double meaning of trade mark – confusion likely – registration refused.

Background

This decision is pursuant to an opposition by Apple Inc (‘the Opponent’) under s 52 of the Trade Marks Act 1995 (‘the Act’) to registration of the trade mark detailed below, in the name of Meracomm Pty Ltd (‘the Applicant’).
Trade Mark:          apple juice (‘the Trade Mark’)
Application No.:     1760042
Priority Date:         20 March 2016
Goods:Class 9: Solar panels and solar energy collectors for electricity generation including portable solar; Inverters, isolator switches, circuit breakers, batteries and cables for use in solar systems; Mounting devices for use in solar systems; Batteries for storage of energy for electricity generation including batteries for electric vehicles; Charging stations for electric vehicles; Fuel Cells.
Class 11: Solar lighting and apparatus for solar lighting.
Endorsement:         Provisions of paragraph 44(3)(b) and/or Reg 4.15A(3)(b) applied.
The application to register the Trade Mark was examined as required by s 31 of the Act, and eventually accepted under the provisions of s 44(3)(b). (The prior trade mark which gave rise to the application of s 44(3)(b) is not at issue here). The acceptance was advertised in the Australian Official Journal of Trade Marks on 15 December 2016.
The Opponent filed a Notice of Intention to Oppose registration on 14 February 2017 and a Statement of Grounds and Particulars (‘the SGP’) on 13 March 2017.
Thereafter the parties filed evidence, discussed in more detail later in this decision, after which the Opponent requested a hearing. I heard the matter, as a delegate of the Registrar of Trade Marks, in Canberra on 6 July 2018. Gabriella Rubagotti of counsel, instructed by Baker & McKenzie law firm, prepared written submissions and spoke at the hearing on the Opponent’s behalf. The Applicant did not attend the hearing but written submissions were prepared on its behalf by Griffith Hack patent & trade mark attorneys.

Grounds, onus and relevant date

The grounds of opposition particularised in the SGP are those under ss 42, 43, 44, 60 and 62A. The Opponent bears the onus of establishing at least one of its grounds of opposition, and should it succeed on one of its grounds it is not necessary that I consider any of the remaining grounds. Should be decision be appealed, nevertheless, the Opponent may plead any grounds it considers relevant before the Court. The standard of proof is the ordinary civil standard of the balance of probabilities.[1]
[1] Pfizer Products Inc v Karam [2006] FCA 166, [6]-[26].
The relevant date at which the rights of the parties are determined is 20 March 2016, the filing date of the application.[2]
[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd [1954] HCA 82.

Evidence

The evidence filed in this matter comprises three declarations, as follows:
Evidence in support
Declaration by Thomas R. La Perle, Assistant Secretary and Director of the Legal Department of the Opponent, with Annexures TRL-1 to TRL-79, dated 15 August 2017.
Evidence in answer
Declaration by Rory Jayasinhe, Director of the Applicant, with Annexures 1 and 2, dated 22 November 2017.
Evidence in reply
Declaration by Robert Anthony Arnold, Partner in the law firm Baker & McKenzie, with Annexures RAA-1 to RAA-10, dated 25 January 2018.
I have summarised the facts relevant to this decision as follows.
The Opponent is an American company, incorporated in 1977, that produces mobile communication and media devices, personal computers and portable digital music players; some of the most well-known of which are the iPhone, iPad, Mac, iPod, Apple Watch and Apple TV branded devices. It also sells a variety of related software, digital content, and accessories. Those accessories include cables, connectors and adaptors; USB power adaptors; battery cases; charging and syncing docks; keyboards; headphones; covers and cases. The Opponent sells its products worldwide on a vast scale – worldwide revenue since 2001 is in the order of billions as are sales in the Asia Pacific region (which includes Australia).
It has also created a licensing program allowing third parties to design and manufacture merchandise and accessories specifically intended for use with its iPod, iPhone and iPad branded devices. The program is commonly referred to as the Apple MFi Program, or MFi Program, an abbreviation of ‘Made for iPod’, ‘Made for iPhone’ and ‘Made for iPad’. The third party products range from connectors, cables and cases to fashion accessories to speaker systems. Licensees are permitted to use certain rights, including trade mark rights, after obtaining approval from the Opponent in respect of those proposed products.
The Opponent’s growth and market recognition has been enormous. In 2012 it became the most valuable company by market capitalization of all time as of that date. In May 2017 it became the first company worth over $800 billion (by valuation). The Apple brand has been ranked first or second most valuable global brand, between 2011 and 2016, by Millward Brown Optimor (a company that releases an annual list of the top 100 most valuable global brands). Interbrand, another company that publishes an annual survey of brand value, has ranked the Apple brand in the top ten world’s most valuable brands since 2011 and at number one from 2013 to 2016. Similarly, the Opponent has appeared in the top ten of the Fortune 500 list of companies between 2013 and 2016, as well as being named in 2016 by Fortune Magazine as the world’s most admired company for the ninth year running. Further appearances are made in annual lists released by The Centre for Brand Analysis (based in the UK) and Forbes Magazine. Numerous articles in Australian publications speak of the popularity of the Opponent’s products and the strength of its brand.
Since its incorporation in 1977, the Opponent has consistently used the word ‘Apple’ and/or a device of an apple with a bite taken out of it (‘the Apple logo’) in the promotion and sale of its products. It owns a suite of 100 pending and registered trade marks in Australia with priority dates earlier than that of the Trade Mark. The recognition of the ‘Apple’ word mark and the Apple logo was acknowledged in a 2013 decision of this office, wherein the delegate stated:
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.[3]
[3] Apple Inc. v Experienced Apples Pty Ltd [2013] ATMO 84, [19]-[20].
The Opponent points out that the Applicant’s declarant previously made another application to register the Trade Mark in respect of various goods in class 9 including syncing and charging cables, portable power banks and chargers for smartphones and tablets, and various charging docks and cradles. (That application has since been withdrawn). It also points out that the Applicant is itself a licensee under the MFi program and sells a range of accessories including cables and connectors purportedly compatible with the Opponent’s products; apparently under the trade mark SPACEPOD.
The Opponent provides examples of portable solar chargers for use with Apple products available in the Australian market, including one sold by Aldi (which includes a portable charger and portable solar panels).
Lastly, an extract from the Oxford English Dictionary defines the word ‘juice’ as, inter alia, ‘electricity, electric current. slang.’
As to the Applicant, it is an Australian company which imports, wholesales and retails a wide range of fast-moving consumer goods, including some electronic goods (although the sale of electronic goods is only a minor part of its business). Its customers include major Australian retailers such as Coles, Aldi and Bunnings.
Since 2009 a major aspect of the Applicant’s business has been the importing, marketing and sale of solar panels. The Applicant is the exclusive Australian agent for the Chinese company Perlight Solar Co Ltd and is responsible for the sales and marketing of their solar products in Australia.
Mr Jayasinhe, in his capacity as Director of the Applicant, declares his intention to expand the range of solar products sold by the Applicant to include portable panels, solar lighting and solar batteries. To that end the Applicant has ‘tendered for a number of solar projects with Aldi’ over the last five years, by which it appears he means the Applicant has tendered to provide Aldi with portable panels, solar security lights and solar portable chargers for Aldi to sell under its home brands.
Mr Jayasinhe further declares that he intends to import and sell solar products under his own brand ‘apple juice’. Of the development of the Trade Mark he states:
I developed the apple juice trade mark as I believe it provides a distinctive reference to green energy (hence the reference to green apples) and ‘juice’, which is often understood as referring to power or energy. Hence, products will be marketed ‘apple juice…green energy from the sun’.
He goes on to state that he does not intend to use the Trade Mark in conjunction with other marks the Applicant uses (such as the SPACEPOD brand); that the solar products sold under the Trade Mark will not include goods similar to those that the Opponent is known for, such as smart phones and computers; and that any ‘apple juice branding’ surrounding the Trade Mark will clearly refer to the beverage.

Section 60

Section 60 of the Act provides:
60 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.
The trade marks relied upon by the Opponent in respect of this ground include the word ‘Apple’ and the Apple logo (collectively referred to as ‘the Opponent’s trade marks’), as well as a list of 105 Australian registered and pending trade marks that include either ‘Apple’ or the Apple logo.
To establish the ground of opposition the Opponent must demonstrate its trade marks had acquired a reputation in Australia such that by the priority date, 20 March 2016, the use of the Trade Mark would be likely to deceive or cause confusion.[4]
[4] The notion of ‘deceive’ does not necessarily imply intent to do so, per Lord Denning in Parker-Knoll Limited v Knoll International Limited [1962] RPC 265, 174.
Reputation in this context refers to the recognition of the Opponent’s trade marks by the public generally,[5] although the size and nature of the relevant market must be taken into account.[6] I note further that confusion or deception may be likely where very little nexus exists between the goods and/or services in question depending on the strength of reputation and degree of similarity between the parties’ trade marks,[7] and that confusion cannot arise solely from reputation but must always involve some degree of similarity between trade marks, whether it be called deceptive similarity or something less.[8]
[5] McCormick & Company Inc v McCormick (‘McCormick’) [2000] FCA 1335, [81].
[6] Le Cordon Bleu BV v Cordon Bleu International Ltee [2000] FCA 1587, [91].
[7] Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi [2012] ATMO 124, [40].
[8] Rogers Seller & Myhill v Reece Pty Ltd [2010] ATMO 5, [39].
Reputation in a jurisdiction may be proved by a variety of means including advertisements, television, radio, magazines or newspapers, and/or inferred from volumes of sales or advertising expenditure.[9] I am satisfied that by the priority date the Opponent’s trade marks had acquired a reputation of the kind contemplated by s 60 in respect of portable communication and media devices, computers and associated accessories. The Opponent has consistently applied its trade marks to its goods and those goods have enjoyed unprecedented popularity in Australia and the world. The strength of the reputation is confirmed by the various lists naming ‘Apple’ as the most, or one of the most, valuable brands globally and by the various Australian publications discussing the popularity of Apple products, not to mention sales in the order of billions. I refer also to the delegate’s comments cited at paragraph 12. To that end the first limb of s 60 is satisfied.
[9] McCormick, [83]-[86].
The next question is whether on account of that reputation the use of the Trade Mark in respect of the goods for which registration is sought would be likely to deceive or cause confusion.
Firstly it must be recognised that ‘apple juice’ has meaning as an expression in its own right, being the juice of apples. That is its primary signification.
It is also true that ‘juice’ is a common colloquial term referring to electricity or electrical power. This is shown in the extract from the Oxford English Dictionary (also confirmed by the Macquarie Dictionary, cited in the Opponent’s submissions) and I am aware of it from my own knowledge. Viewed in that context, the Trade Mark may be interpreted as indicating goods which provide electrical power (‘juice’) to ‘Apple’ branded products.
These two interpretations are not mutually exclusive. Rather, the double meaning of the expression may make it more desirable as a trade mark (or assumed to be so by the public), owing to a clever play on words. Mr. Jayasinhe himself declares both that ‘juice’ is often understood to refer to power or energy, and that ‘apple juice’ refers to a beverage.
The potential for confusion based on this double meaning is enhanced by the nature of the Applicant’s goods. The word ‘Apple’ has a strong reputation in respect of various electronic devices that require regular charging. The Applicant’s goods in class 9 are primarily concerned with the provision of power, particularly solar power. As evidenced by the Opponent, there are numerous portable and solar charging devices available in the Australian market. It would therefore not be unreasonable to conclude that a significant number amongst the Australian population would be confused, in that they might be caused to wonder[10] whether the parties’ goods were associated, or that the Applicant’s goods were produced specifically for use with Apple products. This is enhanced by the existence of the MFi market, wherein it is recognised that third parties produce accessories for use with the Opponent’s products.
[10] Registrar of Trade Marks v Woolworths Limited (1999) FCA 1020, [50].
In respect of the Applicant’s goods in class 11, I acknowledge that solar lighting and apparatus for solar lighting are further removed from the goods primarily for which the Opponent’s trade marks have a reputation. At the same time, I consider that the Australian market recognises a degree of diversification in the products offered by the Opponent. Such products include APPLE TV devices, which interact with a user’s television to display media content, and APPLE PAY software, which interacts with various point of sale devices to allow users to make payments. I do not consider it an unreasonable extension to believe, or to be confused as to whether, the Opponent had diversified into devices or software that interacted with solar lighting. Such is corroborated by the Opponent’s 2015 trade mark registrations for APPLE HOMEKIT and ‘Works with Apple HomeKit’, registered in respect of various electronic goods as well as apparatus for the home including for lighting and lighting fixtures.[11] The fact that the Applicant’s director has previously applied to register the Trade Mark in respect of accessories commonly used with the Opponent’s devices, and now applies to register it in respect of solar power apparatus and solar lighting further indicates that such an extension is not altogether unwarranted.
[11] Other than nominating the registrations of APPLE HOMEKIT and ‘Works with Apple HomeKit’ in the list of trade marks relied upon to establish s 60, the Opponent’s evidence does not discuss these trade marks nor whether the devices or software for which they are registered are available in Australia. The registrations are nonetheless an indication that an extension into this market by the Opponent is not only conceivable, but likely.
I am accordingly satisfied that the Opponent’s trade marks had, before the priority date of the Trade Mark, acquired a reputation in Australia such that the use of the Trade Mark would be likely to deceive or cause confusion. The ground of opposition under s 60 is therefore established.

Decision and costs

Section 55 of the Act relevantly provides:
Unless subsection (3) applies to the proceedings, 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.
The Opponent has established the ground of opposition under s 60 of the Act. I therefore refuse to register trade mark application 1760042.
Both parties sought an award of costs. Costs generally follow the event and given there is no apparent reason to depart from this principle I award costs against the Applicant under s 221 of the Act in line with the amounts in Schedule 8 of the Trade Mark Regulations 1995.

Nicole Worth
Hearing Officer
Oppositions & Hearings
26 September 2018