Apple Inc v Swatch AG - [2019] ATMO 19

TRADE MARKS ACT 1995

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

Re:Opposition by Apple Inc. to extension of protection to two International Registrations Designating Australia – 1715688 (International Registration number 1261460) (classes 9, 14) SWATCH ONE MORE THING and 1715689 (International Registration number 1261461) ONE MORE THING (classes 9, 14) – both in the name of Swatch AG.

Delegate:	Adrian Richards
Representation:	Opponent: Fiona McNeil of Counsel, instructed by Dean Gerakiteys, Senior Associate at Clayton Utz. Holder: Stephen Rebikoff of Counsel, instructed by Paul Fong, Principal at Watermark.
Decision:	2019 ATMO 19 – Oppositions under Regulation 17A.29 of the Trade Marks Regulations 1995 (Cth) – grounds of opposition under sections 42(b), 58, 59, 60 and 62A considered – no ground established.

Background

These reasons concern oppositions to the extension of protection to Australia of two international trade mark registrations designating Australia (together, ‘IRDAs’). The first is for the words SWATCH ONE MORE THING. Its international registration number is 1261460, its Australian application number is 1715688 and it claims a convention priority date of 28 November 2014. The second is for the words ONE MORE THING. Its international registration number is 1261461, its Australian application number is 1715689 and it claims a convention priority date of 27 November 2014. The IRDAs are were both filed in Australia on 22 May 2015 by Swatch AG (‘Holder’), and their specifications of goods consist of the following identical claims:
Class 9:Apparatus for recording, transmission and reproduction of sound or images; electronic payment processing apparatus, apparatus for processing cashless payment transactions; magnetic recording media, sound recording disks; compact disks, DVDs and other digital recording media; apparatus enabling the playing of compressed sound files (MP3); calculating machines and data processing equipment, software; game software for mobile telephones, for computers and for digital personal stereos; electronic game software for mobile telephones, for computers and for digital personal stereos; computers, portable computers, handheld computers, mobile computers, personal computers, wrist computers, electronic tablets and computerized and mobile devices, digital personal stereos, mobile telephones and new-generation mobile telephones featuring greater functionality (smartphones); telecommunication apparatus and instruments; apparatus for recording, transmission, reproduction of sound or images, particularly mobile telephones and new-generation mobile telephones incorporating greater functionality (smartphones); hand-held electronic apparatus for accessing the Internet and sending, receiving, recording and storing short messages, electronic messages, telephone calls, faxes, video conferences, images, sound, music, text and other digital data; handheld electronic apparatus for wireless receiving, storing and transmitting of data or messages; handheld electronic apparatus for monitoring and organizing personal information; handheld electronic apparatus for global positioning [GPS] and displaying maps and transport information; handheld electronic devices for detecting, monitoring, storing, surveillance and transmitting data relating to the user activity, namely position, itinerary, distance traveled, heart rate; covers for computers, portable and mobile telephones; optical apparatus and instruments, particularly spectacles, sunglasses, magnifying glasses; cases for spectacles, magnifying glasses and sunglasses; batteries and cells for computers and electronic and chronometric apparatus
Class 14:Precious metals and their alloys and goods made of these materials or coated therewith included in this class, namely figurines, trophies; jewelry, namely rings, earrings, cufflinks, bracelets, charms, brooches, chains, necklaces, tie pins, tie clips, jewelry caskets, jewelry cases; precious stones, semi-precious stones; timepieces and chronometric instruments, namely chronometers, chronographs, clocks, watches, wristwatches, wall clocks, alarm clocks as well as parts and accessories for the aforesaid goods, namely hands, anchors, pendulums, barrels, watch cases, watch straps, watch dials, clockworks, watch chains, movements for timepieces, watch springs, watch glasses, presentation cases for timepieces, cases for timepieces
(‘Holder’s Goods’)
The IRDAs were advertised as having been accepted for possible extension of protection on 10 September 2015. On 2 November 2015 Apple Inc. (‘Opponent’) filed notices of intention to oppose extension of protection to the IRDAs. The Opponent followed this with statements of grounds and particulars on 23 November 2015. This office gave copies of the statements of grounds and particulars to the Holder on 26 November 2015, who responded by filing notices of intention to defend on 7 December 2015.
From this point, the prosecution of these two oppositions had come to be effectively treated as joined by the parties. The Opponent filed one set of evidence in support covering the IRDAs on 10 March 2016, the Holder did the same with its evidence in answer on 1 July 2016, and the Opponent followed suit with its evidence in reply on 10 August 2016. This office wrote to the parties on 15 September 2016, inviting the parties to request an oral hearing or to file written submissions to be considered when it came time to decide these oppositions.
On 12 October 2016 the Holder requested a hearing on the oppositions to the IRDAs. A hearing date not yet having been set, the Opponent made the same request on 3 May 2017. In its request to be heard, the Opponent also asked that the IRDAs be heard together with a third opposition. No response was offered to the Opponent’s request at that time. However, after I had reviewed the files in preparation for their upcoming hearing I wrote to the parties on 24 August 2018 refusing the request for that third opposition to be heard with the IRDAs, and providing brief reasons as to why.
Returning to the timeline, after the parties had both requested to be heard, they placed the oppositions on hold by seeking a six month long cooling-off period beginning on 27 June 2017. The parties subsequently extended the cooling-off period to the maximum 12 months allowed under reg 5.16 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’).
After the expiry of the cooling-off period, this office issued Formal Hearing Notices to the parties setting a hearing for Canberra on 21 September 2018. I was allocated to conduct the hearing in my role as a delegate of the Registrar of Trade Marks. As mentioned above, after reviewing the files I wrote to the parties on 24 August 2018. In that correspondence I also reminded the parties as to their obligations under reg 5.17(6) of the Regulations to file a written summary of submissions prior to an oral hearing. Both parties filed their outlines of submissions by their respective due dates.
The hearing went ahead as scheduled. In attendance for the Opponent was Fiona McNeil of Counsel instructed by Dean Gerakiteys, Senior Associate at Clayton Utz. The Holder was represented at the hearing by Stephen Rebikoff of Counsel instructed by Paul Fong, Principal at Watermark.

Evidence

The evidence filed in these proceedings consists of the following:
Evidence in support
Statutory Declaration of Thomas R. La Perle, Director of the Opponent’s Legal Department, made 9 March 2016 with exhibits TLP-1 to TLP-10
Evidence in answer
Declaration of Jeannine Aebi, Chief Financial Officer and Vice-President of Swatch AG, made 22 June 2016 with attachments 1 to 11
Evidence in reply
Statutory Declaration of Brett Chapman Doyle, Special Counsel at Clayton Utz, made 10 August 2016 with annexures A to K
I have outlined aspects of this evidence as they relate to the grounds of opposition below. But before I move on to that discussion, there are two aspects of the evidence that are convenient to address here.
The first has to do with the Opponent’s summary of submissions, which at one point seek to supplement the Opponent’s evidence in support. In his declaration, Mr La Perle describes a video on the website ‘YouTube’, including a hyperlink to the video and a screenshot at a critical point in that video. The Opponent’s summary of submissions note that the hyperlink has been broken since the evidence in support was filed, and provides a hyperlink to another video with the same subject matter.
This office has had the capacity to receive video files in evidence for some time. Had the Opponent wanted certainty that this video would be viewed by the decision-maker, it should have filed the video itself, preferably as an annexure to its evidence in support. It is doubtful that a hyperlink included in evidence actually incorporates the material to which it links. A declaration is a point-in-time snapshot of information. This is something a tribunal can review with some certainty, and a contradictor can fairly be expected to respond to. A hyperlink, in contrast, is fluid. As illustrated by the Opponent’s experience here, the information linked to by a hyperlink can change.
During the hearing Ms McNeil asked me whether I had viewed this video. After indicating that I wanted to hear from the Holder about its admissibility, and that it was over two hours long, I told her that I had not. When Ms McNeil then asked to play a portion of the video at the hearing, I invited submissions from Mr Rebikoff. He said that the Holder has a few general reservations about this, which he did not expand upon. Mr Rebikoff ultimately said that the Holder would not resist the playing of the video, as it was, in the view of the Holder, not consequential to any of the grounds of opposition.
The second aspect of the evidence relates to an attachment to the Aebi declaration. The attachment contains printouts of several web pages, one of which is in German without an accompanying translation. Prior to the hearing the Opponent noticed this deficiency in the Holder’s evidence and offered up a machine translation of the page. Looking over the translation, it does not break new ground. It conveys very similar information to the English language web pages that sit along with it in the attachment.
The very small likelihood that these materials would have an effect on the outcome of these oppositions tends to lean toward me giving them no weight. On the other hand, they are each relevant in some way to the grounds of opposition. On balance, in the interests of fully hearing the arguments of the parties, I have decided to give both of these corrections to the evidence the weight they would have been due had they been properly filed.

Grounds and onus

The twin statements of grounds and particulars nominate five grounds of opposition: ss 42(b), 58, 59, 60 and 62A. The Opponent pressed all of those grounds at the hearing.
The onus typically falls on the Opponent to establish at least one of these grounds of opposition, though the onus can shift to the Holder under s 59. The standard of proof for each is based on the ordinary civil standard, the balance of probabilities.[1] The rights of the parties are generally to be determined at the priority date of each of the IRDAs.[2]

Discussion of the grounds of opposition

[1] Pfizer Products Inc v Karam (2006) 219 FCR 585, 591-4 [16]-[26], cited in Telstra Corporation Ltd v Phone Directories Company Pty Ltd (2015) 237 FCR 388, 420 [133].

[2] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595.

Section 60

This provision is set out below:
60Trade 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 first element of this ground of opposition requires that the Opponent identify a trade mark that had acquired a reputation by the priority date of each IRDA. The one day difference between priority dates is unlikely to affect any outcome, and at any rate it is not this timing that is at the heart of the controversy. The Holder’s position is that the Opponent has not identified a trade mark, or failing that, the trade mark did not have the requisite reputation.
It can be taken as a matter of judicial notice that the Opponent’s house marks, Apple and the Apple device, had a significant reputation by November 2014. At any rate Mr La Perle’s declaration provides plenty of evidence that establishes this point. The Opponent’s reputation in those marks is not the subject of these reasons.
The Opponent’s case for this ground of opposition as limited by the particulars in the pair of SGPs is a reputation it claims to be associate with to the unregistered mark ONE MORE THING. Mr La Perle’s declaration details around 34 uses of the phrase ‘one more thing’ by senior officers of the Opponent at keynote addresses over a 17 year period. Particularly noteworthy among the keynotes are the series of ‘Stevenotes’ delivered by the Opponent’s CEO Steve Jobs between around 1998 and 2011. Of these, Mr La Perle recites the following account from the Wikipedia entry titled ‘Stevenote’:
A typical Stevenote began with Steve Jobs presenting sales figures for Apple products and a review of products released during the past few months. He then presented one or more new products. Reminiscent of Peter Falk's Columbo, he typically feigned some concluding remarks, turned as if to leave the stage and turned back, saying “But there's one more thing”…
This ‘one more thing’ Mr Jobs then introduced would often, though not always, be a new product or feature to be offered for sale by the Opponent. The Opponent’s evidence includes lists and other mentions of Mr Jobs’ ‘one more thing’ announcements copied from several websites including ‘Apple Gazette’, ‘Wikipedia’, ‘YouTube’ and ‘EverySteveJobsVideo’.
Mr Jobs’ usage of the phrase began with an offhand announcement to the crowd at MacWorld San Francisco on 8 January 1998 that the Opponent had returned to profitability. His first use of the phrase to announce a new offering of the Opponent appears to have been on 21 July 1999 at MacWorld New York, where he announced the AirPort wireless base station. Several more goods (or variations on existing goods, such as carrying extra memory or a new colour) were launched in this fashion in 1999. Then on 5 January 2000, again at MacWorld San Francisco, Mr Jobs’ exclaimed ‘one more thing’ before announcing that he had been permanently appointed CEO of the Opponent. A raft of new products and variations on existing products followed Mr Jobs’ use of this phrase over the years proceeding. The slideshow up on stage behind Mr Jobs would often also carry the words. This formula came to be known—fans began to react to them, to anticipate their use, and to celebrate them.
iTunes for Windows was announced on 23 April 2003 accompanied with a variation on the phrase ‘one more feature…’ The iPod Shuffle announcement at MacWorld San Franciso is a notable example among Mr Jobs’ uses of ‘one more thing’ in 2005. On 12 September 2006 at the ‘It’s Showtime!’ special event, Mr Jobs used his now signature rhetorical flourish three times: for the availability of movies on iTunes, a sneak peek at the product that would become Apple TV, and finally to introduce John Legend who[3] then gave a performance for the crowd. Downloading of music direct to device was a ‘one more thing’ of 2007. A related announcement followed at the same event—a partnership with the Starbucks café chain that would allow users to find out what’s playing the café and immediately buy it over WiFi. The iPhone Software Roadmap Special Event on 6 March 2008 included a ‘one more thing’ from Mr Jobs introducing a Silicon Valley venture capitalist to the crowd, who in turn announced a fund for new companies who wanted to build iPhone apps. There were several more ‘one more thing’ moments from Mr Jobs, each announcing some new product, service or feature. The final Stevenote, complete with the last ‘one more thing’ from Mr Jobs, was delivered on 6 June 2011 at the Apple Worldwide Developers Conference.
[3] Mr La Perle’s declaration states that this was John Mayer, but the exhibits attached differ as to which singer performed at this event. There is no need to be certain as to who performed that day. Of note here are the words spoken by Mr Jobs before introducing whichever artist.
For a time following the death of Mr Jobs, the phrase appeared, at least to a number of commentators, to have been retired. That was until the 2014 Apple Worldwide Developers Conference, where new CEO Tim Cook used it to announce the first Apple Watch. It was this footage that was subject to a broken link in the Opponent’s evidence, as I discussed above. This usage of the phrase ‘one more thing’ was declared by Mr La Perle to be ‘a tradition…in connection with global product launches…continued by Apple’s current CEO, Mr Cook’. Watching the video of the event during the hearing, I saw the three words appear on a screen behind Mr Cook as they had done many of the times that Mr Jobs had uttered them. Then, as Mr Cook began his incantation, the crowd erupted with sustained clapping, cheering and whistling.
The Opponent has also provided examples of usage of this phrase by third parties. Much of the detail of Mr Jobs’ introductions came from websites that sought to compile all of those memorable moments. In the same vein, the Opponent refers to a number of videos made by fans of the Opponent (or possibly Mr Jobs) compiling in quick succession all/most of the times the phrase was deployed by him. Mr La Perle also furnishes evidence that an unofficial biography of Mr Jobs was titled One More Thing.
I have noted above several occasions when high ranking officers of the Opponent, and particularly Mr Jobs have used this phrase in the announcement of a new product or service offering. Indeed, this type of usage was apparently more frequent than his other uses of it. But his other uses of the phrase cannot be ignored. As such, I have also included many examples above where that ‘one more thing’ Mr Jobs introduced had nothing to do with a product or service of the Opponent. It also bears a brief mention that the phrase was not always used for new products or services. A notable example was Mr Jobs’ presentation in January 2007, where he introduced three new devices, but then the big reveal was that that they were all in fact merely features of the first iPhone. He did this without resorting to the catchphrase.
The Holder raised several points in its submissions that each question whether any of the above usage of the phrase ‘one more thing’ by the Opponent’s senior officers was trade mark use within the meaning of the Act. The relevant aspects of the provision defining of use of a trade mark in the Act are set out below:
7Use of trade mark
…
(4)In this Act:
use of a trade mark in relation to goods means use of the trade mark upon, or in physical or other relation to, the goods (including second‑hand goods).
(5)In this Act:
use of a trade mark in relation to services means use of the trade mark in physical or other relation to the services.
I have set out below what I consider to be the most forceful of the Holder’s submissions on this issue:
- The Opponent has never used ‘one more thing’ on or in connection with any particular goods or services—‘it has only been used in connection with Mr Jobs and his presentations’. I note that there is evidence of a far smaller number of uses by other senior officers of the Opponent, but in this same context of a presentation, and possibly in homage to Mr Jobs.
- Mr Jobs’ usage of the phrase introduced a variety of things that went well beyond the goods and services of the Opponent.
- The phrase ‘one more thing’ is one that is used in ordinary English to allude to the fact that the speaker has something else to say. This is the sense in which Mr Jobs and other officers of the Opponent used the phrase.

The Opponent’s rebuttal to these points relied upon where and by whom the phrase has been used, namely, Ms McNeil put it to me that Mr Jobs was the CEO of the Opponent and the phrase was used in connection with the Opponent’s goods and services.
I accept that Mr Jobs, Mr Cook and at least one other senior officer of the Opponent used this phrase before introducing some new goods or services before the priority dates of the IRDAs. However, I find the Holder’s characterisation of that usage to be, on balance, more accurate. Each example where the phrase ‘one more thing’ has been used in the Opponent’s evidence does not rise above that of a rhetorical or dramatic device. These words, used once before introducing a particular new product or service of the Opponent, are then never used again in relation to that product or service. The phrase has not been used in any consistent or ongoing way in relation to any of the Opponent’s goods or services, nor to the Opponent’s business generally. Patchy and temporary use does not have the character of indication of a trade source. Also weighing heavily against the Opponent on this issue is this ordinary meaning that the phrase carries—simply that the speaker is about to say something else. Again, in each of the Opponent’s examples, this sense has not been modified or adapted to distinguish the goods or services of the Opponent in any way. Rather, in each of the Opponent’s examples it has been used only in the sense of its ordinary meaning. The sole exception to this may be the unauthorised biography of Mr Jobs. But the subject matter of the book would by its nature be directed at the man himself rather than at goods or services offered by the Opponent.
When viewed in this way I am satisfied that the phrase ‘one more thing’ has not been used by the Opponent or its senior officers as a trade mark in the sense of the Act. Rather, it seems that this phrase has been associated with Mr Jobs in the same way that his signature look was wearing a black skivvy. The definition of the adjective ‘trade mark’ as it appears in the Macquarie Dictionary is ‘of or relating to any object, mannerism, etc., which is invariably associated with particular person.’[4] It is this other, adjectival sense of the term trade mark which more closely describes the Opponent’s CEO’s history with this phrase.[5]
[4] Macquarie Dictionary, trademark (online edition, 2019) < That is to say, this meaning is part of the language of this country, but not of its trade mark law.
I find that none of the uses of the phrase ‘one more thing’ put forward by the Opponent is use as a trade mark. This ground of opposition is not established. It is therefore not necessary to discuss here the evidence and submissions in relation to reputation in the supposed trade mark. However, I have discussed the Opponent’s evidence in this respect in relation to the s 42(b) ground of opposition.

Section 58

The Opponent’s position in relation to this ground of opposition is that it was the first user of the IRDAs. Since I have already found that none of the Opponent’s examples of use of the phrase ‘one more thing’ constituted use as a trade mark, this ground of opposition has not been established.

Section 42(b)

This provision is set out below:
42Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
…
(b)its use would be contrary to law.
The Opponent alleged in its SGPs and its submissions at hearing that s 18 of the Australian Consumer Law[6] and the tort of passing off would both be breached by use of the IRDAs. The former relevantly provides that ‘a person must not, in trade or commerce, engage in conduct that is misleading or deceptive or is likely to mislead or deceive.’ At this point I note that these laws, unlike the two grounds of opposition I have already considered and dismissed, do not require a pre-existing trade mark as such.
[6] Competition and Consumer Act 2010 (Cth), sch 2 (‘ACL’).
The following is an excerpt from the Opponent’s written submissions summarising the relevant principles in relation to s 18 ACL:
[T]he question is whether, by the Holder’s use of the [IRDAs], a not insignificant number of ordinary persons in the relevant class is, or is likely to be, misled or deceived…
Conduct is misleading or deceptive or likely to mislead or deceive if it has a tendency to lead into error: there must be a sufficient causal link between the conduct and error on the part of the person exposed to the conduct.[7] Evidence that consumers have in fact been misled is not essential.[8]
[7] Australian Competition and Consumer Commission v TPG Internet Pty Ltd (2013) 250 CLR 640, [39].
[8] Primary Health Care Limited v Commonwealth of Australia [2017] FCAFC 174, [430].
The Opponent submits, and I accept, that the relevant class is the ordinary and reasonable consumer, since the IRDAs claims are in respect of mass marketed retail products. That is, again in the Opponent’s words, ‘one of reasonable intelligence and awareness but who is without any particular specialised knowledge or training’.
The opponent then relies upon the ‘20-year association between the trade mark ONE MORE THING and the Opponent…[that] has been used prominently and repeatedly by the Opponent in keynote speeches…with a range of goods and services marketed by the Opponent in Australia.’
Returning at the point at where I left the discussion of s 60 above, the Holder made several submissions that impugned the Opponent’s claims to reputation in Australia stemming from its examples of uses of the phrase:
- All of the keynote talks took place outside of Australia, toward the end of presentations that commonly lasted over an hour, which were attended by a few thousand people.
- The fan video compilations of Mr Jobs saying ‘one more thing’, and the unofficial biography of Mr Jobs titled One More Thing are similarly weak in terms of establishing any reputation—there is no evidence that anyone from Australia watched the videos or bought the book.
This places a serious question over whether any reputation associated with the Opponent’s use of the phrase ‘one more thing’ ever made it to these shores, but this was not the end of the Holder’s critique. It also makes submissions in terms of the likelihood of the relevant class of consumer being led into error. The Opponent’s ‘20-year association’ with the phrase is of little importance to this ground of opposition if it never made its way to Australia. The Opponent’s efforts in conveying the usages of the phrase to this country could at best be characterised as passive. The kind of Australian consumer who would be aware of Mr Jobs’ several uses of the phrase over that period would not, in my estimation, be of the type that the Opponent describes as falling within the relevant class. In other words, a person who seeks out and watches online videos of two hour long presentations from the CEO of the Opponent is not ‘the ordinary and reasonable consumer’. Such behaviour would fairly attract a more extreme label.
Even if some Australian consumers with knowledge of historical uses of this phrase by officers of the Opponent could be taken to fall within the relevant class, their high level of involvement with the Opponent and its offerings would mean they are unlikely to be led into error by use of the IRDAs.[9]
[9] Monster Energy Company v Disney Enterprises, Inc [2017] ATMO 2, [37].
Yet another problem for the Opponent is this requirement that the number of ordinary persons in the relevant class likely to be led into error is not insignificant. In order to have found out about Mr Jobs’ tendency to sometimes introduce something new or different with the phrase ‘one more thing’, an Australian consumer would have needed to seek out or have stumbled upon this fact. The Opponent has given me no method of estimating the numbers of people who might have done this. On this basis, I do not consider that use of the IRDAs would be contrary to s 18 ACL.
Turning to the tort of passing off, given the facts that the Opponent relies upon are identical to its claim in relation to s 18 ACL, ‘no distinction needs to be made between the [s 18 ACL] claim and its passing off claim.’[10] The Opponent had not established this ground of opposition.
[10] Telmak Teleproducts (Australia) Pty Ltd v Coles Myer Ltd (1989) 89 ALR 48, 67.

Section 59

This ground of opposition is reproduced below:
59Applicant not intending to use trade mark
The registration of a trade mark may be opposed on the ground that the Applicant does not intend:
(a)to use, or authorise the use of, the trade mark in Australia; or
(b)to assign the trade mark to a body corporate for use by the body corporate in Australia;
in relation to the goods and/or services specified in the application.
Note:For Applicant see section 6.
As I alluded to earlier, this ground of opposition can involve a shifting onus. If the Opponent puts forward a prima facie case that the Holder lacked an intention to use either of the IRDAs at its filing date, the evidentiary onus will be on the Holder to show that it in fact held the requisite intention at that time.[11]
[11] Suyen Corp v Americana International Ltd (2010) 187 FCR 169, 198 [190].
The Opponent relies on several angles to make out its prima facie case for this ground of opposition. The first comes from a news article found in an exhibit to Ms Aebi’s declaration. The article was taken from the ‘Sky News Australia’ website, and is dated 25 August 2015. It recounts a statement from the Holder’s Chief Executive that the Holder had taken a positive decision not to make a smartwatch. With that in mind, the Opponent points to the claim in the specifications of both IRDAs for ‘wrist computers’.
The second item comes from another article attached to Ms Aebi’s declaration. It is dated 26 August 2015, is taken from the website ‘Apple Insider’, and it discusses the Holder’s basic applications filed in Switzerland from which the IRDAs derive their priority. The article quotes an unnamed spokesperson for the Holder explaining its motivation for seeking trade mark registration: ‘In this case, the name was inspired by inspector Columbo’s citation “Just one more thing”—obviously our design team plans to launch a collection inspired by the “Film Noir”’. The writer of the article goes on to observe that the Holder ‘doesn’t currently have a watch or collection going by the Film Noir name. It could conceivably be developing one, since it only applied for the trademark in November.’
The third line run by the Opponent attempts to colour the Holder’s conduct in seeking protection for the IRDAs as ‘not an intention to use the marks but rather to irritate its competitor, the Opponent.’ One angle the Opponent relies upon to demonstrate this is exemplified by a quote in Mr Le Perle’s declaration from the website ‘Patently Apple’ dated 19 August 2015 where an unnamed contributor asserts that the Holder’s seeking to register ‘one more thing’ is an attempt to ‘poke [the Opponent] in the eye’. Several more opinions from around the same time and along the same lines are also included in Mr La Perle’s declaration. This aspect of the Opponent’s evidence does not warrant any further exploration. The reaction of commentators to the Holder’s trade mark filings does nothing to inform the present enquiry. Another aspect of this line of argument relates to a past scuffle between the parties relating to attempts to secure trade marks for iSwatch and iWatch, and relatedly to a current dispute over the Holder’s attempts to secure trade mark registration for TICK DIFFERENT in the face of usage by the opponent of THINK DIFFERENT.
Leaving aside the unhelpful views of online commentators mentioned in the paragraph above, there remains enough in here from the Opponent to make out a prima facie case. I now turn to the Holder’s positive case for its intention to use the IRDAs.
Ms Aebi’s evidence seeks to put into context how the Holder came to adopt the IRDAs. She declares that the Holder is known for releasing theme-based collections of its products. She gives six examples of such collections launched in 2015, including APRES-SKI (based on the atmosphere of winter evenings in the mountains) and GRŰEZI ALL! (inspired by iconic Swiss values, traditions and styles). In another example was a 1991 limited edition collection of watches called ONE MORE TIME, resembling a cucumber, a chili pepper and a strip of bacon with an egg. These are now collectors’ items. Yet another example was the Holder’s release in 2008 of its ‘James Bond 007 Villain Collection’, which consisted of watches named after and styled for Bond film bad guys and henchmen, such as Ernst Stavro Blofeld, Dr No, Jaws and Oddjob. In its media release the Holder’s co-founder Nicolas Hayek adopted the alter ego Dr Swatch and proclaimed that ‘Omega is James Bond’s watch of choice, but real, interesting villains prefer Swatch’.
As for the Holder’s adoption of the IRDAs themselves, as has been alluded to already Ms Aebi declares that ONE MORE THING is an ‘oblique reference to the theme of TV crime-shows and film noir’. Mr Aebi’s evidence explains, TV detective Columbo had a technique of talking with a suspect, thanking them and turning to leave before pretending to remember something by saying something along the lines of ‘oh, there just one more thing’ before asking a far more serious question that would point out a vital hole in the suspect’s story. There was a surprising symmetry to the evidence between the parties’ accounts of the famed users of this rhetorical device: Just One More Thing happened to be the title that Peter Falk (the actor who played Columbo) gave his 2007 autobiography.
Ms Aebi further declares that the Holder ‘has a genuine intention to use the mark ONE MORE THING’, and that it is suited for use in a film noir or TV crime show inspired product range.
I do not see any serious reason to doubt the Holder’s explanation of its business practices and potential plans for future trade mark use of the IRDAs. This extends to the Holder’s claims to ‘wrist computers’, which would be an unsurprising expansion of the Holder’s product offerings. The Opponent made some submissions questioning the Holder’s stated intentions based on a lack of use to date, but there are good reasons why businesses will often wait until registration is secured before using a trade mark. On balance, the Opponent has not established this ground of opposition.

Section 62A

This provision is set out below:
62AApplication made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
Several of the principles that attach to an evaluation of this ground of opposition were distilled in a bullet list in DC Comics v Cheqout Pty Ltd.[12] I have set out the most relevant of those below:
·Bad faith is a serious allegation and the more serious the allegation, the more cogent the evidence required to support it.
·Bad faith does not require dishonesty.
·Bad faith is a combined test that involves subjective and objective elements. The subjective element refers to the knowledge of the relevant person at the time of making the application. The objective element requires the decision-maker to decide whether, in the light of that knowledge, the relevant person’s behaviour fell short of acceptable commercial standards.
·The question is whether the conduct falls short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in the particular area. It is whether the knowledge of the Applicant was such that the decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.
·The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading.
·All the circumstances surrounding the application to register the mark are relevant.
·An act of bad faith cannot be cured by an action after the date of application.
[12] (2013) FCR 212, 206 [62].
The Opponent submits that the subjective element of this ground of opposition is satisfied because at the filing date ‘the [Holder] knew of the Opponent’s use of and reputation in the words ONE MORE THING’ and it did not intend to make a smartwatch. The second aspect of this was dealt with in my discussion of s 59 above, and first aspect of this has been considered and largely dismissed in my discussion of ss 42(b) and 60 above. After these are stripped away, the Holder’s subjective knowledge at the time of filing would have been that it probably knew that the Opponent’s senior officers would around twice a year use the phrase ‘one more thing’ as a preface to revealing some diverse thing (though often a new product or feature) to a crowd.
Turning to the objective elements, the Opponent more or less relies upon the same evidence here that it relied upon for the s 59 ground of opposition, albeit with a different emphasis. It relies a little more on internet comments reacting to the Holder’s move to secure trade mark rights in the IRDAs, refers again to the iWatch/iSwatch and THINK DIFFERENT/TICK DIFFERENT disputes between the parties, the Holder’s CEO’s 2015 statement that it had decided not to make a smartwatch and to the lack of use to date from the Holder.
I have very little before me as to substance of the parties’ other trade mark disputes, though apart from perhaps colouring the conduct of the Holder their relevance is not terribly clear. The reaction of various parties on the internet or in publications does not necessarily speak to any standard of acceptable commercial behaviour. And of course, all of this needs to be weighed against the Holder’s positive story about its adoption of the IRDAs as I outlined in my discussion of the s 59 ground. That is to say, it does not strike me as unacceptable in the commercial world to think of a new theme for a product line, and seek to secure trade mark registrations for it. The Opponent has not established this ground of opposition.

Decision and costs

Regulation 17A.34N of the Regulations provides the following:
17A.34NDecision on opposition
(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.
(2)The Registrar must notify the International Bureau of the Registrar’s decision.
The Opponent has not established any of the grounds of opposition it nominated on its SGPs. Given this, I extend protection to the IRDAs for all of the goods listed in them one month from the date of this decision.
However if the Registrar is served with a notice of appeal to this decision before protection is extended to one or both of the IRDAs, protection shall not occur to the IRDA that is subject to the appeal until that appeal has been withdrawn or discontinued. Otherwise protection of the IRDAs would be subject to any orders of the court.
The International Bureau will be notified of this decision.
Both parties asked for an award of costs. The general rule is that costs follow the event, and I see no reason to depart from that here. Accordingly, in respect of 1715688 I award costs against the Opponent under s 221 of the Act in accordance with the amounts specified in the Trade Marks Regulations 1995 (Cth) sch 8. For 1715689 I award reduced costs against the Opponent under s 221 of the Act in the same manner as Hume Industries (Malaysia) Berhard v James Hardie & Coy Pty Ltd.[13]
[13] [2001] ATMO 78.

Adrian Richards
Hearing Officer
Oppositions and Hearings
Trade Marks and Designs Group
8 February 2019