Apple Inc v Wholesale Central Pty Ltd

[2010] ATMO 7

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 1162904 (9) - - filed in the name of Wholesale Central Pty Ltd.

Delegate:

Michael Kirov

Representation:

Opponent: Carmen Champion of Counsel, instructed by Kate McElhone of Clayton Utz Lawyers

Applicant: Michelle Gorton of Chrysiliou Law

Decision:

2010 ATMO 7

Section 52 opposition: sections 44 and 60 pressed – trade marks not deceptively similar – use not likely to deceive or cause confusion –opposition not established. Costs awarded against the Opponent.

Background

1. This is an opposition brought by Apple Inc (“the Opponent”) pursuant to s.52 of the Trade Marks Act 1995 (“the Act”) to registration of the trade mark  subject of application number 1162904 in the name of Wholesale Central Pty Ltd (“the Applicant”).

2. Details of the opposed application are as follows:

Application Number:  1162904

Trade Mark:      (“the Trade Mark”)

Priority Date:       24 February 2007 (“the Priority Date”)

Goods:Class: 9 Carry bags and accessories for laptop and personal computers; portable sound devices such as MP3 players / portable audio and data storage equipment and accessories for these devices such as cables, covers, earphones and any other accessories that are compatible with these portable sound players; mobile phones and accessories for these devices such as cables, covers, earphones and any other accessories that are compatible with the mobile phone device

(“the Goods”)

1. The Opponent, an American company, is a long established designer, manufacturer and retailer of personal computers, related software and computer related devices, accessories and peripherals.  Since 2001 one of the Opponent’s most successful products in Australia and around the world has been a small portable music player sold under the trade mark IPOD (“the Players”), of which in the order of 100 million units had been sold worldwide by the end of 2007.  My own knowledge as a consumer suggests, and the evidence confirms, that both the Players and the IPOD trade mark were very well known in Australia as at the Priority Date.

2. The Applicant is an Australian company incorporated in 2005 which offers goods for sale via its website at as well as supplying a number of retail outlets in Australia.  The goods in question may be described as accessories for digital devices such as portable computers, mobile phones and music players, including accessories specifically designed for use with the Opponent’s products.  They include items such as USB drives, cleaning products, laptop bags and, relevantly to this matter, covers and cases for the Players, as well as for the Opponent’s iPhone® branded mobile phones and Macbook® branded laptop computers.

3. At the heart of the present opposition is the claimed similarity of the Trade Mark to marks containing or consisting of the element IPOD which had been used and/or registered by the Opponent in Australia as at the Priority Date.

4. The Opponent filed its Notice of Opposition (“the Notice”) on 21 September 2007, with the Opponent bearing the onus of establishing one or more grounds of opposition on the balance of probabilities[1].

   [1] Following Gyles, J in Pfizer Products Inc v Karam (2006) 70 IPR 599. See also Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 (18 August 2009) at [22] to [26].

5. The parties served and filed Evidence in Support and Evidence in Answer as follows:

Evidence in Support

▪ Statutory Declaration by Thomas La Perle made 6 February 2008, with Annexures A to S

Evidence in Answer

▪ Statutory Declaration by Suzana Molnar made 24 September 2008, with Exhibits SM-1 to SM-3

1. I heard the matter as delegate of the Registrar of Trade Marks on 6 July 2009 in Sydney.  Michelle Gorton of Chrysiliou Law appeared for the Applicant.  Carmen Champion of Counsel, instructed by Kate McElhone of Clayton Utz Lawyers, appeared for the Opponent.

Grounds of Opposition

1. The Notice lists twelve specific grounds corresponding to various provisions of the Act. At the hearing, however, Ms Champion indicated the Opponent would only be pressing those grounds based on sections 44 and 60 of the Act. These grounds are discussed below. The remaining grounds listed in the Notice are of course not established.

Discussion

Section 44

1. The ground based on section 44 of the Act is indicated in the Notice as follows:

   The Trade Mark is deceptively similar or substantially identical to one or more trade mark applications or registrations owned by the Opponent and covers similar, or closely related, goods and/or services. Therefore, registration of the Trade Mark would be contrary to Section 44 of the Act.

2. Only s.44(1) of the Act is relevant to this ground and this is reproduced below:

Identical etc. trade marks

44.(1) Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant's trade mark) in respect of goods (applicant's goods) must be rejected if:

(a) the applicant's trade mark is substantially identical with, or deceptively similar to:

(i) a trade mark registered by another person in respect of similar goods or closely related services; or
(ii) a trade mark whose registration in respect of similar goods or closely related services is being sought by another person; and

(b) the priority date for the registration of the applicant's trade mark in respect of the applicant's goods is not earlier than the priority date for the registration of the other trade mark in respect of the similar goods or closely related services.

Note 1:  For deceptively similar see section 10.

Note 2:  For similar goods see subsection 14(1).
Note 3:  For priority date see section 12.

1. The Opponent relies on 7 registrations for marks containing or consisting of the element IPOD for its s.44 ground (“the Opponent’s Registrations”). These are detailed below, (with only their Class 9 specifications reproduced)[2]:

   [2] For reasons which will become apparent I have not found it necessary in reaching my decision to consider in detail the goods or services in other classes covered by the Opponent’s Registrations.

Regn No. and Trade Mark	Priority Date	Class-es	Class 9 Specification
890681 IPOD	31.08.01	9, 28, 38 & 42	Class: 9 Computers, computer hardware, computer peripherals, hand held computers, personal digital assistants, electronic organisers, electronic notepads, apparatus for recording, transmission and reproduction of sounds, images, or other data; magnetic data carriers; mobile digital electronic devices, telephones, computer gaming machines, microprocessors, memories boards, monitors, displays, keyboards, cables, modems, printers, videophones, disk drives, cameras; computer software, prerecorded computer programs for personal information management, database management software, character recognition software, telephony management software, electronic mail and messaging software, paging software, database synchronization software, computer programs for accessing, browsing and searching online databases, computer software and firmware, namely operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; electronic handheld devices for the wireless receipt and/or transmission of data, particularly messages, and devices that enable the user to keep track of or manage personal information; software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server; and software for the synchronization of data between a remote station or device and a fixed or remote station or device; computer hardware and peripherals
1028187 IPOD	28.07.04	9, 16, 18, 25, 35, 37, 41 & 42	Class: 9 Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and, instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers; calculating machines, data processing equipment and computers; apparatus for data storage; hard drives; miniature hard disk drive storage units; pre-recorded vinyl records, audio tapes, audio-video tapes, audio video cassettes, audio video discs; audio tapes (all being sold together with booklets); CD-ROMs; digital versatile discs; mouse pads; batteries; rechargeable batteries; chargers for electric batteries; headphones; stereo headphones; in-ear headphones; audio speakers; audio speakers for home; monitor speakers; speakers for computers; personal stereo speaker apparatus; digital audio and video devices; audio cassette recorders and players, video cassette recorders and players, compact disc players, digital versatile disc recorders and players, digital audio tape recorders and players; radios; cameras; video cameras; bags and cases adapted or shaped to contain cameras and/or video cameras; cordless telephones; mobile telephones; parts and accessories for mobile telephones; mobile telephone covers; mobile telephone cases; mobile telephone cases made of leather or imitations of leather; mobile telephone covers made of cloth or textile materials; portable digital electronic devices and software related thereto; handheld digital electronic devices and software related thereto; MP3 players; hand held computers, personal digital assistants, electronic organizers, electronic notepads; magnetic data carriers; telephones, computer gaming machines, microprocessors, memories boards, monitors, displays, keyboards, cables, modems, printers, videophones, disk drives, cameras; pre-recorded computer programs for personal information management, database management software, character recognition software, telephony management software, electronic mail and messaging software, paging software, mobile telephone software; database synchronization software, computer programs for accessing, browsing and searching online databases, computer software and firmware, including operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; electronic handheld devices for the wireless receipt and/or transmission of data, particularly messages, and devices that enable the user to keep track of or manage personal information; software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server; and software for the synchronization of data between a remote station or device and a fixed or remote station or device; bags and cases adapted or shaped to contain MP3 players, hand held computers, personal digital assistants, electronic organizers and electronic notepads; parts and fittings for all the aforesaid goods
1072038 IPOD NANO	24.06.05	9	Class: 9 Computers, computer hardware, computer peripherals, hand held computers, personal digital assistants, electronic organizers, electronic notepads, apparatus for recording, transmission and reproduction of sounds, images, or data; magnetic data carriers; mobile digital electronic devices, computer gaming machines, microprocessors, memory boards, monitors, displays, keyboards, cables, modems, printers, disk drives, cameras; computer software, prerecorded computer programs for personal information management, database management software, character recognition software, electronic mail and messaging software, paging software, database synchronization software, computer programs for accessing, browsing and searching online databases, computer software and firmware, operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; electronic handheld devices for the wireless receipt and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; software for the redirection of messages, Internet e-mail, and/or data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server; software for the synchronization of data between a remote station or device and a fixed or remote station or device; stereo speakers; apparatus, instruments and materials for transmitting and/or receiving and/or recording sound and/or images; radio receivers, amplifiers, sound recording and reproducing apparatus, electric phonographs, record players, high fidelity stereo apparatus, tape recorders and reproducing apparatus, loudspeakers, multiple speaker units, microphones, and parts and fittings for all the aforesaid goods
1074696 IPODCAST	22.03.05	9, 38, 41 & 42	Class: 9 Computers, computer peripherals, hand held computers, computer terminals, personal digital assistants, electronic organizers, electronic notepads, apparatus for recording, transmission and reproduction of sounds, images, or other data; magnetic data carriers; mobile digital electronic devices, telephones, computer gaming machines, microprocessors, memory boards, monitors, displays, keyboards, cables, modems, printers, videophones, disk drives, cameras; computer software, prerecorded computer programs for personal information management, database management software, character recognition software, telephony management software, electronic mail and messaging software, paging software, database synchronization software, computer programs for accessing, browsing and searching online databases, computer software and firmware for operating system programs, data synchronization programs, and application development tool programs; electronic handheld devices for the wireless receipt, storage and/or transmission of data, messages, and devices for keeping track of or manage personal information; software for the redirection of messages, Internet electronic mail, and/or data to one or more electronic handheld devices on or associated with a personal computer or a server; and software for the synchronization of data between a remote station or device and a fixed or remote station or device; computer hardware; facsimile machines, answering machines, telephone-based information retrieval software and hardware; adapters, adapter cards, connectors and drivers; blank computer storage media, fonts, typefaces, type designs and symbols in the form of recorded data; chips, discs and tapes bearing or for recording computer programs and software; random access memory, read only memory; solid state memory apparatus; electronic communication equipment and instruments; telecommunications apparatus and instruments; computer and electronic games; computer equipment for use with any of the aforesaid goods; electronic apparatus with multimedia functions for use with any of the aforesaid goods; electronic products with interactive functions for use with any of the aforesaid goods; accessories, parts, fittings, and testing apparatus for all the aforementioned goods; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, a11 the aforementioned goods
1108460 IPODCAST	22.03.05	9, 36, 38 & 42	Class: 9 Computers, computer peripherals, hand held computers, computer terminals, personal digital assistants, electronic organizers, electronic notepads, apparatus for recording, transmission and reproduction of sounds, images, or other data; magnetic data carriers; mobile digital electronic devices, telephones, computer gaming machines, microprocessors, memory boards, monitors, displays, keyboards, cables, modems, printers, videophones, disk drives, cameras; computer software, prerecorded computer programs for personal information management, database management software, character recognition software, telephony management software, electronic mail and messaging software, paging software, database synchronization software, computer programs for accessing, browsing and searching online databases, computer software and firmware for operating system programs, data synchronization programs, and application development tool programs; electronic handheld devices for the wireless receipt, storage and/or transmission of data, messages, and devices for keeping track of or manage personal information; software for the redirection of messages, Internet electronic mail, and/or data to one or more electronic handheld devices on or associated with a personal computer or a server, and software for the synchronization of data between a remote station or device and a fixed or remote station or device; computer hardware; facsimile machines, answering machines, telephone-based information retrieval software and hardware; adapters, adapter cards, connectors and drivers; blank computer storage media, fonts, typefaces, type designs and symbols in the form of recorded data; chips, discs and tapes bearing or for recording computer programs and software; random access memory, read only memory; solid state memory apparatus; electronic communication equipment and instruments; telecommunications apparatus and instruments; computer and electronic games; computer equipment for use with any of the afooresaid goods; electronic apparatus with multimedia functions for use with any of the aforesaid goods; electronic products with interactive functions for use with any of the aforesaid goods; accessories, parts, fittings, and testing apparatus for all the aforementioned goods; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods
1112858	10.08.05	9	Class: 9 Full line of electronic and mechanical parts and fittings for portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image, and video files;electronic docking stations; stands specially designed for holding portable and handhels digital electronic devices; battery chargers; battery packs; electrical connectors, wires, cables, and adaptors; wired and wireless remote controls for portable and handheld digital electronic devices; headphones and earphones; stereo amplifier and speaker base stations; automobile stereo adapters; audio recorders; radio receivers; radio transmitters; video viewers, namely, video monitors for portable and handheld digital electronic devices; and carrying cases, all for use with portable and handheld digital electronic devices for recording, organising, transmitting, manipulating, and reviewing text, data, audio, image, and video files video files
1122315 IPOD HI-FI	20.09.05	9	Class: 9 Audio speakers; sound systems comprising remote controls, amplifiers, loudspeakers and components thereof; apparatus for connecting and charging portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing audio, video and other digital content, namely cradles and parts and fittings for all the aforesaid goods

1. For s.44 to apply at all, the priority dates of the registrations relied upon must be earlier than the 24 February 2007 priority date of the opposed application. This requirement is met by all of the Opponent’s Registrations.

2. To succeed under its section 44 ground it is sufficient if the Opponent establishes on the balance of probabilities that:

   • the opposed application covers similar goods[3] to those covered by one or more of the Opponent’s Registrations; and

   • the Trade Mark is substantially identical or deceptively similar to one or more of the Opponent’s relevant trade marks detailed above.

   [3] As defined in s.14(1) of the Act, namely the same goods and/or goods of the same description.

1. The Opponent does not claim that the Trade Mark is “substantially identical” to any of the 7 trade marks relied upon, but does submit it is “deceptively similar” to each of them. Section 10 of the Act provides that “a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion”.

2. As was pointed out[4] by French J (as he then was) in Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 (“the Woolworths Metro case”) the logic of s.44 suggests the determination of whether, and to what degree, an applicant’s goods or services are similar to, or closely related to, relevant other goods and services is “logically antecedent to” assessing the deceptive similarity of the trade marks under comparison. In this regard French J explicitly approves the observation in Wilcox J’s first instance decision in the Woolworths matter[5] that “The closer the relationship between the services and particular goods, the more likely any similarity in marks will prove deceptive”.

   [4] In the context of closely related goods and services, but relevant also in the context of “similar goods” as defined in s.14(1) of the Act.

   [5] Woolworths Limited v Registrar of Trade Marks (1998) 42 IPR 615 (at 624)

3. In the current opposition the two earliest of the Opponent’s Registrations, namely registrations 890681 and 1028187, are both for the mark IPOD alone.  On the face of it the opposed application covers similar goods to the goods in Class 9 covered by both these registrations.  It is accordingly not necessary to further consider the extent to which it might also cover similar goods, or goods closely related to, the goods or services in Classes 16, 18, 25, 28, 37, 37, 38, 41 or 42 covered by the two registrations.

4. The other five registered marks relied upon, being marks which combine the element IPOD with other material, are IPOD NANO, IPODCAST, IPODCAST (again),  and IPOD HI-FI.  As explained below, it is not necessary to consider in detail the extent to which the opposed application may cover similar goods, or goods closely related to, the goods or services covered by these five registrations, although it is in any event immediately apparent there is substantial overlap in at least their respective coverage of Class 9 goods.

5. Underpinning the Opponent’s s.44 ground is the Trade Mark’s alleged deceptive similarity to its trade mark IPOD per se. Deceptive similarity to the Opponent’s other five registered marks is only asserted because those marks feature the element IPOD. The Opponent’s reliance on these five registrations is therefore effectively redundant. If it succeeds under s.44 solely through reliance on its two registrations for the IPOD mark, then the Opponent will have the result it seeks. If it fails, then reliance on the other five registrations will not advance its case any further.

6. I accordingly now turn to the issue of whether the Trade Mark is deceptively similar to the IPOD mark, on the basis that both trade marks might in principle be used for identical goods in Class 9.

7. In the Woolworths Metro case (supra) French J conveniently summarised the issues surrounding deceptive similarity under the Act:

   In Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5, which concerned the 1905 Act, Kitto J set out a number of propositions which have frequently been quoted and applied to the 1955 Act. The essential elements of those propositions continue to apply to the issue of deceptive similarity under the 1995 Act. Applied also to service marks and absent the imposition of an onus upon the applicant they may be restated as follows:

   (i) To show that a trade mark is deceptively similar to another it is necessary to show a real tangible danger of deception or confusion occurring.  A mere possibility is not sufficient.

   (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 (1973) 129 CLR 353 at 362:

   “...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.”

8. It is well established that in order to assess deceptive similarity trade marks should not be compared side by side.  Rather, I should attempt to assess the effect or impression produced on the mind of potential purchasers of the Goods, who know of the Opponent’s IPOD mark (and perhaps have an imperfect recollection of it), when they encounter the Goods bearing the Trade Mark.  In this regard, as Ms Champion highlighted, it is enough if the person of ordinary intelligence and memory would be caused to wonder, or be left in doubt, about whether the goods in question come from the same source.

9. Fundamental to Ms Champion’s submissions with respect to the issue of deceptive similarity was the fact that, in addition to the IPOD mark, the Opponent was also the owner of several other registrations covering relevant Class 9 goods for trade marks which combine the prefix “I”[6] with another, usually descriptive word[7] (“iMarks”).  In particular, she highlighted various references in the La Perle declaration to the Opponent’s trade marks iTunes, iMac, iLife, iWork and iPhone, which she said indicated the Opponent would be perceived as the owner of a “family” of iMarks covering such goods.  In this regard she referred to the UK case of Beck Koller & Co Limited’s Application (1947) 64 RPC 76, where the Court said (at 83):

   When an application for registration is before the registrar, it frequently happens that the search for conflicting marks reveals several marks having some characteristic feature in common with the mark of the application, which marks may stand on the register in the name of one proprietor only, or in the name of several different proprietors.

   If, therefore, all the marks were owned by one proprietor, the registrar would presume that the latter was using a “series” of marks and judge the conflict between the applicant’s mark and each of the proprietor’s marks with this in mind.

   [6] Often rendered in lower case, particularly when the marks in question are in use, but in any event always pronounced separately from the following element.

   [7] With the exception of the Opponent’s registered IMAC trade mark, which combines the prefix “I” with, as Ms Champion put it, “an already well known trade mark of the Opponent”.

10. In this context Ms Champion also referred to the decision of the Australian Trade Marks Office in McDonalds Corporation v Sheli Lubowski [2004] ATMO 56, noting in her written submissions that:

    In the “family” of trade mark cases, the trade marks of an opponent have been found to have a common element, usually a prefix, which is so thoroughly associated with the opponent’s goods or services that the use by another person of a trade mark incorporating that element would deceive or cause confusion.

11. Ms Champion argued that the particular colouring[8] and orientation of the letter “i” in the  mark, which as a whole, of course, is made up of the letters of the Opponent’s IPOD trade mark in reverse order, gave that letter particular prominence.  As she put it:

    The emphasis given to the letter “i” results in the consumer’s attention on seeing the mark being immediately deflected to that particular part of the mark.  The eye thus having been drawn to that particular part of the mark will perceive the very different treatment given to the letter “i” and also its close association with the three waves device.  The aforesaid depiction creates a perception of that combination being the dominant and distinctive feature of the mark.

    The manner of that depiction would immediately bring to the consumer’s mind the association of the mark “i” with the Opponent and its family of “i” products, especially the iPod musical player in light of the use of the soundwave device.

    It is the aforementioned deflection, the recognition of the “i” device and the bringing to mind of the Opponent’s “i” range of products that, it is submitted, would inevitably lead the consumer to read the mark back to front that is commencing with the letter “i”.  That of course results in the mark being read as “ipod” and immediately associated with the Opponent’s iPod product.

    [8] For the benefit of readers viewing this decision in black and white only I mention that the letters “d”, “o” and “p” in the Trade Mark are rendered in black, whilst the rest of the mark is coloured green.

12. Indeed, Ms Champion argued that the filing of the application:

    should be seen for what it is, an attempt to piggy-back on the fame of the ipod trade mark and the association implicit in the use of the lower case “i” in the industry in which the applicant is operating.

This element of “bad faith” in adopting the Trade Mark in the first place was relevant to the question of deceptive similarity, she said.  In this regard she quoted from the joint judgment of Dixon and McTiernan JJ in Australian Woollen Mills Ltd v FS Walton and Co Ltd (1937) 58 CLR 641, an infringement and passing off case, where their Honours said (at 657):

The rule that if a mark or get-up for goods is adopted for the purpose of appropriating part of the trade or reputation of a rival, it should be presumed to be fitted for the purpose and therefore likely to deceive or confuse, no doubt, is as just in principle as it is wholesome in tendency.

1. Ms Champion’s analysis is however flawed in my view.  I note firstly that, with the exception of the trade mark iMac and of the seven registrations under discussion comprising the element IPOD, details of the Opponent’s registrations for other iMarks were not included in the Opponent’s evidence, nor is there any other evidence before me of the state of the register generally  A check of the register in fact indicates there are scores of parties other than the Opponent with registrations for marks of this kind covering relevant goods in Class 9 and the Opponent cannot therefore claim a monopoly in them.  By way of example, 909498 iSoft, 937665 iSkin, 957041 IBOX, 1043762 iPORT, 1051153 iJOG, 1056171 IWAKE, 1103271 IVISION, 1140407 iDrive and 1156176 iListen, all in separate ownership, are but a small selection of current third party registrations covering relevant Class 9 goods for iMarks.

2. Moreover, in his declaration Mr La Perle mentions the Opponent markets its products, including the Players “as well as third party compatible products”, through its websites at and A check of these websites reveals that many third party accessories for the Players are advertised, including accessories bearing the trade marks iSkin, iClear and iSee.  I would add that I have personally owned and used the Opponent’s products for some twenty years and have continuously subscribed to the monthly magazine Australian Macworld, in which both the Opponent’s products and those of third parties are regularly advertised and reviewed, for over fifteen years.  Many third party accessories and peripherals intended for use with the Opponent’s products and bearing iMarks are advertised or reviewed in the January 2007 edition of Australian Macworld, including the marks iSkin, iTalk, iMic, i-Mate, iPaq, iRecord and iSnug.

3. The Opponent has not therefore demonstrated to my satisfaction that the person of ordinary intelligence and memory would be caused to wonder, or be left in doubt, about whether the Goods come from the Opponent merely because the Trade Mark terminates in the letter “i”, however that letter may be presented.

4. Nor do I think the fact that the Trade Mark is made up of the letters of the Opponent’s IPOD trade mark in reverse order would cause a significant or substantial number of relevant consumers to wonder whether the Goods were those of the Opponent.  Indeed, the evidence indicates the Trade Mark has been continuously used in Australia for some of the Goods, including protective cases or covers for the Players, since January 2007.  Net sales for the period 1 January 2007 to 31 July 2007 apparently exceeded $71,000, with $8,000 apparently spent over the same period on advertising and promoting the goods concerned.  Notwithstanding this, Ms Molnar, who is a Director of the Applicant company, states in her declaration made in September 2008 that:

   At no stage since January 2007 (the date in which my Company offered goods bearing the Trade Mark in Australia) has there been any known instances of confusion between the Opponent’s iPOD…trade mark and the Trade Mark.

5. Ms Gorton, for the Applicant, emphasised that to establish deceptive similarity the Opponent must show there is a real tangible danger of deception or confusion occurring and that a mere possibility is not sufficient.  She pointed out that although the Opponent’s evidence in support was settled on or about 6 February 2008, some twelve months after use of the Trade Mark commenced, it contained no claims of any actual confusion or deception.  Moreover, despite Ms Molnar’s having specifically raised the issue in the Applicant’s evidence in answer in September 2008, the Opponent elected not to rely on any evidence in reply addressing this.  The true test of deceptive similarity was the marketplace itself, argued Ms Gorton, and the absence of evidence of any confusion or deception was therefore telling.

6. As Ms Champion countered, lack of evidence of actual confusion should not of itself necessarily be fatal to the Opponent’s case.  Nevertheless I do note that cases including Solavoid Trade Mark [1977] RPC 1 (at [29]), Alex Pirie & Sons Ltd’s Appn (1993) 50 RPC 147 (at 160) and Conde Nast Publications Pty Ltd v Virginia Taylor (1998) 41 IPR 505 (at 509) make the point that, as Burchett J put it in Conde Nast, “later events may cast light upon the true position at an earlier date”.  His Honour went on to quote with approval from the judgment of Lord Tomlin (with whom Lord Russell of Killowen and Lord Wright agreed) in Alex Pirie that:

   It is the user and not the registration which is liable to cause confusion, and the commercial user has not produced any proof of confusion. This fact cannot be regarded as unimportant even though allowance be made for difficulty of proof …

7. An additional matter raised by Ms Champion was the fact that by majority the Full Court in the Woolworths Metro case (French and Tamberlin JJ; Branson J dissenting) expressly approved the taking of reputation into account when assessing deceptive similarity under s.44 in circumstances “where an element of a trade mark has a degree of notoriety or familiarity of which judicial notice can be taken” since “it would be artificial to separate out the physical features of the mark from the viewer’s perception of them”[9].  Applying this principle in the Woolworths case, the Court did not consider the trade mark WOOLWORTHS METRO to be deceptively similar to the mark METRO in view of the “notorious familiarity” amongst Australian consumers of the name “Woolworths”.  In the present opposition, Ms Champion said, the evidence showed the Opponent’s IPOD trade mark as a whole had the kind of notoriety or familiarity the Court would have had in mind.

   [9] Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411, per French J at 431.

8. I accept that the IPOD trade mark was very well known in Australia as at the Priority Date in relation to the Players.  However, as Ms Gorton pointed out, this can effectively work against the Opponent in its claim that relevant confusion or deception as between the IPOD mark and the Trade Mark was likely.  Indeed, it was the “notorious familiarity” of the name “Woolworths” which led the Court in the Woolworths case to conclude the marks WOOLWORTHS METRO and METRO were not deceptively similar.  Such in my opinion is the case in the present opposition.  What may be characterised as the ubiquitous nature of the IPOD mark would in my view tend to lessen the risk of relevant deception or confusion amongst Australian consumers.

9. While the issue of the Trade Mark’s originality is not determinative of the question of deceptive similarity, which is an objective question, I mention for the sake of completeness that Ms Molnar says the Applicant “decided on DOPI as it was derived from “Digital Options and Personalised Items”[10].  That said, it clearly cannot have escaped the Applicant’s attention that the Trade Mark also happened to be made up of the letters of the Opponent’s well known IPOD mark in reverse order.  In this regard it is of course common ground that some of the Goods are specifically intended as accessories for the Players and Ms Molnar declares that the packaging for all of the Applicant’s goods intended for use with the Opponent’s products bears a disclaimer such as “This product is in no way associated with Apple Computer, Inc[11].,  iPod and iPhone are registered trade marks of Apple Computer, Inc.”[12] In my view, nevertheless, this “coincidental” similarity is not enough to render the Trade Mark “deceptively similar” to the IPOD mark in terms of s.44 of the Act.

   [10] In fact these words appear prominently on the packaging of the Applicant’s goods in evidence, immediately below the Trade Mark. While not of specific relevance to the Opponent’s s.44 ground, their use in this manner does in my view tend to reinforce the Trade Mark’s reading in the first instance as an acronym for the words rather than as an inversion of the IPOD trade mark as argued by the Opponent.

   [11] This being the Opponent’s former name prior to a name change in or about March 2007.

   [12] While Ms Champion made detailed submissions in relation to these disclaimers, and to the relevance of such disclaimers generally, I do not believe it is necessary to discuss those submissions here given my view that the Trade Mark is not deceptively similar to the Opponent’s IPOD mark in any event.

10. In summary, my finding is that the Trade Mark is not deceptively similar to the Opponent’s IPOD trade mark subject of its registrations 890681 and 1028187 and it follows it is not deceptively similar to the marks subject of the further five registrations relied on by the Opponent either. The Opponent has accordingly not established its ground of opposition under section 44.

Section 60

1. The ground based on section 60 is indicated in the Notice as follows:

   One or more of the Opponent’s trade marks have acquired a reputation in Australia, as a result of which use of the Trade Mark by the Applicant is likely to deceive or cause confusion contrary to Section 60 of the Act.

1. Section 60 of the Act itself is reproduced below:

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.

1. Here again what needs to be considered is the notional use the Applicant might make of the Trade Mark rather than the actual manner in which it may have used the mark in the past.  The issue is whether such use would be likely to deceive or cause confusion in light of the reputation of the Opponent’s IPOD trade mark[13] as at the Priority Date.

   [13] The Opponent’s evidence addresses the reputation of the IPOD trade mark only and not that of any composite trade marks containing the element IPOD.

2. As mentioned earlier, I am satisfied from the evidence and from my own knowledge as a consumer that the IPOD mark was very well known in Australia as at the Priority Date in connection with, in particular, the Players. However, given the obvious differences between the parties’ marks when considered as wholes, the fact that it is common for traders in relevant goods to feature the letter “i” in their trade marks and the lack of evidence of any instances of actual confusion, I am not satisfied use of the Trade Mark for any of the Goods would be likely to deceive, or cause confusion amongst, a significant number of consumers. The Opponent has accordingly not established its ground of opposition under s.60.

Decision

1. Section 55 of the Act provides:

   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.

2. I have found the Opponent has not established either of the grounds it raised pursuant to sections 44 and 60 of the Act. The trade mark application may accordingly proceed to registration one month from the date of this decision. If the Registrar has been served with a notice of appeal before that time, I direct that registration shall not occur until the appeal has been decided or discontinued.

Costs

1. Both parties requested an award of costs in their favour.  As the successful party, the Applicant is entitled to its costs and I accordingly award costs against the Opponent as per Schedule 8 of the Trade Marks Regulations 1995.

Michael Kirov

Hearing Officer

Trade Marks Hearings

21 January 2010