Apple Inc. v Metropage Pty Ltd

[2013] ATMO 106

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 1453767(9) - IBAD - filed in the name of Metropage Pty Ltd.

Delegate:

Hearing Officer: Jock McDonagh

Representation:

Opponent: David Kell of counsel, instructed by Robert Arnold of Baker and McKenzie Lawyers

Applicant: Jonathan Bolton, solicitor of JBL Solicitors and Managing Director of the Applicant

Decision:

2013 ATMO 106

Section 52 opposition: sections 43, 44, 60 and 62A pressed – s 60 ground of opposition established - no requirement to consider other grounds.

Background

1. This matter is an opposition under section 52 of the Trade Marks Act 1995 (‘the Act’) to the registration of the trade mark filed by Metropage Pty Ltd (‘the Applicant’) details of which appear below:

Application No:  1453767

Priority Date:  13 October 2011

Services:Class 9: Electronic information display terminals including electronic information kiosks, public access display apparatuses and interactive business advertising displays

Trade Mark:  IBAD (‘the Trade Mark’)

1. The application was examined in compliance with section 31 of the Act and advertised as accepted for possible registration in the Australian Official Journal of Trade Marks on 9 February 2012.

2. On 8 May 2012, Apple Inc (‘the Opponent’) filed Notice of Opposition (‘the Notice’) to the registration of the Trade Mark. The Notice is couched in broad terms and includes most provided for by the Act. However, only the sections 43, 44, 60 and 62A grounds were pressed by the Opponent at a hearing of the matter. For the sake of completeness I find that the grounds other than those relied upon by the Opponent at the hearing have been abandoned and note that any ground may be relied upon should my decision be appealed to the relevant Court where the matter will be considered de novo.

3. The Opponent bears the onus of establishing a ground of opposition on the balance of probabilities.[1]

   [1] See Pfizer Products Inc v Karam [2006] FCA 1663; 237 ALR 787; (2006) 70 IPR 599; [2006] AIPC 92-146 per Gyles J at [6] to [26]; Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891; (2009) 180 FCR 60; (2009) 258 ALR 545; (2009) 82 IPR 13; [2009] AIPC 92-355 per Sundberg J at [22] to [26]; and Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) (2012) 94 IPR 551 per Dodds-Streeton J at [13].

4. The date at which a ground of opposition must be established is the date of filing of the application for registration, 13 October 2011: see Southern Cross Refrigerating v Toowoomba Foundry Pty Ltd (1953) 91 CLR 592 at 595.

5. The hearing was before me as a delegate of the Registrar of Trade Marks in Sydney on 18 October 2013.  David Kell of counsel, instructed by Robert Arnold of Baker and McKenzie Lawyers, represented the Opponent.  The Applicant was represented by Jonathan Bolton, solicitor of JBL Solicitors and Managing Director of the Applicant.

6. The parties are relying on the  following evidence:

8.     Declarant	9.     Position	10.   Date Made	11.   Exhibits
Evidence in Support
Thomas R La Perle (“La Perle”)	Director in Legal Department of Opponent	31.01.13	TRL-1 to TRL-49
Judith Deborah King (“King”)	Paralegal employed by Baker & McKenzie	5.02.13	JDK-1
Evidence in Answer
Jonathan Hugh Douglas Bolton (“Bolton”)	Managing Director of Applicant	7.05.12	JB-1
Evidence in Reply
Thomas R La Perle (“La Perle#2”)	Director in Legal Department of Opponent	12.08.13	TRL-1 to TRL-12

Discussion - Section 60 ground of opposition

1. Section 60 of the Act provides:

Trade mark similar to trade mark that has acquired a reputation in Australia

60. 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.

1. To satisfy section 60 the Opponent must establish:

• that another trade mark had, before 13 October 2011, acquired a reputation in Australia in respect of particular goods/services; and

• because of the reputation of that other trade mark, the use of the Trade Mark would be likely to deceive or cause confusion.

1. The Opponent relies upon the reputation of its trade mark iPad. (Class 9:

2. The principles relevant to the assessment of the likelihood of deception or confusion, , were set out by French J in Registrar of Trade Marks v Woolworths (1999) 45 IPR 411 at [50]:

   (ii) A trade mark is likely to cause confusion if the result of its use will be that a number of persons are caused to wonder whether it might not be the case that the two products or closely related products and services come from the same source. It is enough if the ordinary person entertains a reasonable doubt.

   It may be interpolated that this is another way of expressing the proposition that the trade mark is likely to cause confusion if there is a real likelihood that some people will wonder or be left in doubt about whether the two sets of products or the products and services in question come from the same source.

   (iii) In considering whether there is a likelihood of deception or confusion all surrounding circumstances have to be taken into consideration. These include the circumstances in which the marks will be used, the circumstances in which the goods or services will be bought and sold and the character of the probable acquirers of the goods and services.

   (iv) The rights of the parties are to be determined as at the date of the application.

   (v) The question of deceptive similarity must be considered in respect of all goods or services coming within the specification in the application and in respect of which registration is desired, not only in respect of those goods or services on which it is proposed to immediately use the mark. The question is not limited to whether a particular use will give rise to deception or confusion. It must be based upon what the applicant can do if registration is obtained.

   In respect of the last proposition, Mason J observed in Berlei Hestia Industries Ltd v The Bali Company Inc :

   "...the question whether there is a likelihood of confusion is to be answered, not by reference to the manner in which the respondent has used its mark in the past, but by reference to the use to which it can properly put the mark. The issue is whether that use would give rise to a real danger of confusion."

3. I will first determine if the iPad trade mark has acquired a reputation in Australia.

4. In relation to reputation Kenny J states in McCormick & Co Inc. v McCormick, 51 IPR 102, at 128:

In ConAgra Inc v McCain Foods (Aust) Pty Ltd (1992) 33 FCR 302 at 343; 23 IPR 193 at 234, Lockhart J said:

[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum.

1. At 129 Kenny J continues:

   In practice, it is commonplace to infer reputation from a high volume of sales, together with substantial advertising expenditures and other promotions, without any direct evidence of consumer appreciation of the mark, as opposed to the product: …

2. The parties essentially agreed that the Opponent’s iPad trade mark enjoyed a substantial reputation as one of the world’s most famous brands. The evidence in La Perle clearly establishes the amount of media and consumer interest in the iPad branded tablet computer (“the Device”) since its launch in Australia on 28 May 2010.

3. Mr Kell pointed to the evidence of the widespread reference to the Device in contemporary television shows, as well as its extensive marketing in the Opponent’s own Apple retail stores, as well as retailers such as David Jones, Myer, JB Hi-Fi, and Dick Smith Electronics.

4. La Perle shows Australian sales of over 250,000 units in the first six months of availability along with some five million dollars of television and outdoor advertising in Australia and New Zealand.

5. King provides a number of examples of Australian businesses using the iPad device as a means of interacting with their customers, both in its standard hand-held form and as part of electronic information display terminals. King also states that there are hundreds of thousands of applications available for consumers, including business, for use on the iPad device.

6. La Perle#2 provides evidence of purchase of the Devices by major corporations, small/medium enterprises, the Australian Government (including the Department of Defence) and State Government bodies.

7. I am satisfied that the first limb of this ground has been established. Unlike the first, the second limb was not subject to any consensus between the parties.

8. The Applicant, in Bolton, has declared that its goods are a range of display products, such as display kiosks, that are large free-standing or shop front window-mounted devices designed for public access. The Trade Mark is an acronym formed from “Interactive Business Advertising Display”.

9. Mr Bolton, while accepting the extensive reputation of the Opponent and its trade marks, argued that the extent of the reputation would actually militate against a person of ordinary intelligence or memory from apprehending that products bearing the IBAD trade mark originated from the Opponent.

10. Mr Kell pointed to the closeness of the respective goods of the parties along with the very similar nature of the respective trade marks. Mr Kell pointed out that in the single example of the Applicant’s goods in evidence (Bolton, JB-1), the Trade Mark was rendered as iBAD. He submitted that in all the circumstances use of the Trade Mark on the designated goods would cause a real risk that persons encountering them would be caused to wonder if they came from or were associated with the Opponent.

11. Having regard to the evidence of both parties and their submissions, I find myself persuaded by the Opponent. Mr Bolton has highlighted that the Applicant’s goods are quite different to those of the Opponent’s and consumers would not be confused. However, the single example of the goods is of a rectangular touch-screen computer device, very similar to the Opponent’s Device, bearing the Trade Mark rendered as iBAD.

12. The Trade Mark shown is visually and aurally very similar. In all the circumstances, I am satisfied that there is a real risk of confusion if the Trade mark is used for the Applicant’s goods of interest.

13. I am satisfied that it is likely that consumers seeing or hearing the Trade Mark in use in relation with the designated goods  would be caused to wonder whether there is a connection between the Applicant’s goods and the Opponent , or assume – mistakenly – that the designated goods are those of the Opponent or marketed with its authority.

14. Consequently, I am satisfied that this ground of opposition has been established.

Decision

1. Section 55(1) of the Act provides that unless the proceedings are discontinued or dismissed:

   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.

1. I have found the opposition to be successful on the ground raised pursuant to section 60 of the Act. I accordingly refuse to register trade mark application number 1453767.

Costs

1. Mr Kell sought an award of costs. As the successful party, the Opponent is entitled to its costs and I therefore award costs against the Applicant in accordance with Schedule 8 of the Trade Marks Regulations 1995.

Jock McDonagh

Hearing Officer

Trade Marks Hearings

23 December 2013