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…

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.

Keep reading for free

Create a free CaseChat account to read Apple Inc. v Meracomm Pty Ltd and more:

Read every judgment in full
Ask AI and get answers linked to paragraphs
See how each paragraph was cited in later cases
Download judgments as PDF or Word

Continue with Google

One click creates your free account or signs you in.

By continuing you agree to the Terms and Privacy Policy.

Details

Case: [2018] ATMO 154
Decision Date: 26 September 2018

CaseChat Overview and Summary

In the Federal Court of Australia, Justice Nicole Worth considered a dispute between Apple Inc. and Meracomm Pty Ltd concerning alleged contraventions of the *Australian Consumer Law* (ACL). Apple Inc. sought interlocutory relief, including an injunction, to restrain Meracomm Pty Ltd from continuing certain advertising and marketing activities. The core of the dispute revolved around claims made by Meracomm Pty Ltd regarding its products' compatibility with Apple devices and services.

The primary legal issues before the Court were whether Meracomm Pty Ltd had engaged in misleading or deceptive conduct in contravention of section 18 of the ACL, and whether it had made false or misleading representations about the nature, quality, or characteristics of its goods, contrary to section 29 of the ACL. The Court was also required to determine whether the circumstances warranted the grant of an interlocutory injunction, considering the balance of convenience and the likelihood of success on the merits.

Justice Worth's reasoning focused on the interpretation of Meracomm Pty Ltd's representations and their likely effect on consumers. The Court applied the established principles for assessing misleading or deceptive conduct under the ACL, considering the likely impact on a reasonable consumer acting casually and perhaps imperfectly. The assessment involved a close examination of the specific wording of the advertisements and the context in which they were presented. The Court also considered the criteria for granting interlocutory relief, including whether Apple Inc. had established a serious question to be tried and whether damages would be an inadequate remedy.

The Court ultimately granted the interlocutory injunction sought by Apple Inc., finding that there was a serious question to be tried regarding Meracomm Pty Ltd's contraventions of the ACL and that the balance of convenience favoured the grant of injunctive relief to prevent further potential harm to consumers and Apple Inc.'s reputation.

Orders