Healthkit Pty Ltd v Apple Inc
[2017] ATMO 98
•11 September 2017
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 1626348 (9, 35, 36, 41, 42, 44, 45) - HealthKit - in the name of Healthkit Pty Ltd.
and
Opposition by Healthkit Pty Ltd to registration of trade mark application 1637556 (9, 14) HEALTHKIT - in the name of Apple Inc.
| Delegate: | Iain Campbell Thompson |
| Representation: | Apple: Angus Lang of Counsel, instructed by Robert Arnold of Baker & McKenzie. Healthkit: Tom Cordiner of Counsel, instructed by Hugh McLaren of Meerkin & Apel, Lawyers. |
| Decision: | 2017 ATMO 98 Trade Marks Act 1995 Section 52 oppositions to registration 1626348: grounds under sections 44 and 58 – ground under section 44 established in relation to goods and services in Classes 9 and 42, no evidence of use of Trade Mark by Healthkit so subsections 44(3) and 44(4) cannot apply; section 58 not established. 1637556: grounds under sections 58, 59, 60 and 42 – section 58 Healthkit has not established use of Trade Mark before priority date; of Apple Application; section 59 – evidence insufficient to transfer onus onto Apple; section 60 and 42 grounds not established. |
Background
1. These opposition proceedings under section 52 of the Trade Marks Act 1995 (‘the Act’) arise from the filing of two applications for registrations of trade marks. Healthkit Pty Ltd (‘Healthkit’) has filed the following application:
Application No: 1626348
Priority Date: 3 June 2014
Goods/Services: Class 9: Computer software and software applications providing practice and patient management and administration services for medical practitioners; computer software and software applications to enable the transmission, sharing, organisation and management of medical and clinical information; computer software and software applications for accesing [sic] and searching online medical practitioner databases
Class 35: Business management and administration services supporting utilisation of a global computer network; Business recruitment consultancy; Business referrals services; Commercial information services provided by access to a computer database; Compilation and provision of online directories; Compilation of information into computer databases; Compilation of lists of prospective customers; Computerised compilation of customer indexes; Computerised database management; Database management; Employment recruitment; Lobbying (promoting, publicising or otherwise representing the interests or concerns of others); Maintaining data in databases; Online advertising on a computer network; Online data processing services; Online promotion on a computer network; Organisation and administration services in relation to the supply of benefits for customer loyalty and frequent buyer or frequent flyer schemes; Organisation and management of customer loyalty programmes; Organisation, operation and supervision of customer loyalty schemes; Personnel recruitment; Providing information, including online, about advertising, business management and administration and office functions; Sales promotion through customer loyalty programmes (for others); The bringing together, for the benefit of others, a variety of goods (excluding the transport thereof), enabling customers to conveniently view and purchase the goods; Service to assist in establishing a network of business contacts; Systemization of information into computer databases; Updating data in databases
Class 36: Collection of fees, payments or tolls (for others); Collection of payments; Consultancy services relating to insurance; Insurance consultancy; Providing information, including online, about insurance, financial and monetary affairs and real estate affairs; Provision of insurance information; Provision of insurance premium quotations; Electronic payment services; Financial payment services; Payment administration services
Class 41: Advisory services relating to education; Conducting of educational courses; Conducting of exhibitions for educational purposes; Consultancy services relating to education; Design of educational courses, examinations and qualifications; Educational seminars; Event management services (organisation of educational, entertainment, sporting or cultural events); Health education; Medical education services; Physical health education; Providing information, including online, about education, training, entertainment, sporting and cultural activities; Provision of education services via an online forum; Provision of educational courses; Provision of educational information; Provision of information relating to education; Publication of educational materials; Publication of educational texts; Instruction in body awareness; Online (electronic) publication of news; Providing online electronic publications (not downloadable); Publication of multimedia material online; Weblog (blog) services (online publication of journals or diaries); Personal development courses; Personal development training
Class 42: Creating and designing web pages for others, including creating virtual communities for registered users to interact and participate in discussions; Creating and maintaining web sites for others; Creating and maintaining weblogs (blogs) for others; Creating indexes of online information; Creating indexes of online websites and information sources; Database design; Design of computer databases; Design of marketing material; Providing information, including online, about scientific and technological services and research and design relating thereto; Web site design; Development of computer based networks; Hosting computer sites (web sites); Hosting of databases; Hosting of software as a service (SaaS), all in relation to providing practice and patient management and administration services for medical practitioners, patients and health consumers, for enabling the transmission, sharing, organisation and management of medical and clinical information and medical and clinical data, and for accessing and searching online medical practitioner databases, and for the provision of clinical tools to track and manage patient treatment; Hosting of weblogs (blogs); Internet portal services (designing or hosting); Web portal services (designing or hosting); Online provision of web-based applications; Rental of computer hardware; Rental of web servers; Software as a service (SaaS), all in relation to providing practice and patient management and administration services for medical practitioners, patients and health consumers, for enabling the transmission, sharing, organisation and management of medical and clinical information and medical and clinical data, and for accessing and searching online medical practitioner databases, and for the provision of clinical tools to track and manage patient treatment
Class 44: Consultancy services relating to personal appearance (hair, beauty, cosmetics); Providing information, including online, about hygienic and beauty care for human beings or animals
Class 45: Agency services for arranging personal introductions; Consultancy services relating to social planning; Dating and social introduction services provided via online personal advertisements; Information services relating to legal matters; Life coaching (personal mentoring and support services); Online social networking services; Providing information, including online, about personal and social services meeting the needs of individuals; Social work services; Personal background investigations
(‘the Healthkit Specification’)
Trade Mark: Healthkit
(‘The Healthkit Application’)
Endorsements: Provisions of subsection s44(4) and/or Reg 4.15A(5) applied.
2. And Apple Inc (‘Apple’) has filed the following application:
Application No: 1637556
Priority Date: 4 February 2014 (Convention: via 47870 Trinidad and Tobago)
Goods:Class 9: Computers; computer peripheral devices; computer hardware; computer gaming machines; hand held computers; tablet computers; personal digital assistants; electronic organizers; electronic notepads; electronic book readers; handheld electronic game units adapted for use with an external display screen or monitor; handheld digital electronic devices and software related thereto; handheld mobile digital electronic devices capable of providing access to the Internet and for the sending, receiving, and storing of telephone calls, faxes, electronic mail, and other digital data; electronic handheld units for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; sound recording and reproducing apparatus; MP3 and other digital format audio players; digital audio recorders; digital video recorders and players; audio cassette recorders and players; video cassette recorders and players; compact disc recorders and players; digital versatile disc recorders and players; digital audio tape recorders and players; radios, radio transmitters, and receivers; audio, video, and digital mixers; audio amplifiers; audio receivers; audio decoders; car audio apparatus; earphones, headphones; audio speakers; microphones; audio components and accessories; modems; network communication apparatus; electronic communication equipment and instruments; audiovisual teaching apparatus; optical apparatus and instruments; telecommunications apparatus and instruments; global positioning system (GPS) devices; telephones; wireless communication devices for voice, data or image transmission; cables; apparatus for data storage; magnetic data media; chips, discs and tapes bearing or for recording computer programs and software; facsimile machines; cameras; batteries; televisions; television receivers; television monitors; set top boxes; computer software; computer and electronic games; global positioning system (GPS) computer software; computer software for travel and tourism, travel planning, navigation, travel route planning, geographic, destination, transportation and traffic information, driving and walking directions, customized mapping of locations, street atlas information, electronic map display, and destination information; computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, data, graphics, images, audio, video, and other multimedia content, electronic publications, and electronic games; computer software for use in recording, organizing, transmitting, manipulating, and reviewing text, data, audio files, video files and electronic games in connection with computers, televisions, television set-top boxes, audio players, video players, media players, telephones, and handheld digital electronic devices; computer software to enable users to program and distribute text, data, graphics, images, audio, video, and other multimedia content via global communication networks and other computer, electronic and communications networks; computer software for identifying, locating, grouping, distributing, and managing data and links between computer servers and users connected to global communication networks and other computer, electronic and communications networks; computer software for use on handheld mobile digital electronic devices and other consumer electronics; electronic publishing software; electronic publication reader software; computer software for personal information management; downloadable pre-recorded audio and audiovisual content, information, and commentary; downloadable electronic books, magazines, periodicals, newsletters, newspapers, journals, and other publications; database management software; character recognition software; voice recognition software; electronic mail and messaging software; computer software for accessing, browsing and searching online databases; electronic bulletin boards; data synchronization software; application development software; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; electrical and electronic connectors, couplers, wires, cables, chargers, docks, docking stations, interfaces, and adapters for use with all of the aforesaid goods; computer equipment for use with all of the aforesaid goods; electronic apparatus with multimedia functions for use with all of the aforesaid goods; electronic apparatus with interactive functions for use with all of the aforesaid goods; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods; covers, bags and cases adapted or shaped to contain all of the aforesaid goods; navigational instruments; apparatus to check stamping mail; cash registers; mechanisms for coin-operated apparatus; dictating machines; hemline markers; voting machines; electronic tags for goods; prize selection machines; weighing apparatus and instruments; measures; electronic notice boards; measuring apparatus; optical apparatus and instruments; wafers (silicon slices); integrated circuits; fluorescent screens; remote control apparatus; lights conducting filaments (optical fibers); electric installations for the remote control of industrial operations; lightning arresters; electrolyzers; fire extinguishers; radiological apparatus for industrial purposes; life saving apparatus and equipment; whistle alarms; sunglasses; animated cartoons; egg-candlers; dog whistles; decorative magnets; electrified fences; electrically heated socks
Class 14: Horological and chronometric instruments; watches; clocks; timepieces; chronographs for use as timepieces; chronometers; watchstraps; watch bands; cases for watches, clocks, and horological and chronometric instruments; parts for watches, clocks, and horological and chronometric instruments; jewelry
(‘the Apple Specification’)
Trade Mark: HEALTHKIT
(‘the Apple Application’)
3. The Healthkit Application was examined as prescribed by section 31 of the Act. During examination the examiner cited the Apple Application under sections 44(1) and 44(2) of the Act as grounds for rejecting the Healthkit Application. Healthkit provided evidence which it asserted showed prior continuous use. The examiner was satisfied that the evidence allowed the application to be accepted under the provisions of section 44(4) and entered the appropriate endorsement on the Register. The Healthkit Application was then advertised as accepted for possible registration on 19 March 2015 in the Australian Official Journal of Trade Marks.
4. The Apple Application was examined as prescribed by section 31 of the Act and advertised as accepted for possible registration on 16 April 2015 in the Australian Official Journal of Trade Marks.
5. The parties have opposed the registration of each other’s trade marks (‘the Trade Mark’)[1]. The opposition process and filing of associated documents is outlined in the table which appears below:
[1] I note that these trade marks are, to all intents, identical and will treat them as such in these decisions.
[2] Apple Inc v HealthKit Pty Ltd [2016] ATMO 112 (6 December 2016).
| The Healthkit Application | The Apple Application | ||
| Date | Event | Date | Event |
| 19 May 2015 19 Jun 2015 6 Aug 2015 19 Nov 2015 16 Sep 2016 7 Nov 2016 | Notice of Intention to Oppose. Statement of Grounds and Particulars Notice of Intention to Defend. All Evidence in Support – Declaration of Thomas R La Perle made on 18 Nov 2015 with Annexures TRL-1 to TRL-12. Evidence in Support in Apple Application filed as regulation 21.19 information along with declaration of Alison Hardacre made on 28 November 2014 with exhibits HK-01 to HK-07. Hearing[2] re reg 21.19 information and directions in substantive issues. 6. | 10 Jun 2015 9 Jul 2015 14 Aug 2015 25 Nov 2015 2 Mar 2016 7 Mar 2016 16 May 2016 | Notice of Intention to Oppose. Statement of Grounds and Particulars Notice of Intention to Defend. Evidence in Support – Evidence in Answer – Declaration of Thomas R La Perle (‘Perle 2’) made on 29 Feb 2016 with annexures TRL-1 to TRL13; Declaration of Robert Anthony Arnold made on 1 March 2016 with annexures RAA-1 to RAA-2; and Declaration of Dr James Matthew Farrow made on 1 Mar 2016 with Annexures JMF-1 to JMF-11. Reg 21.19 material filed by Healthkit – emails omitted from Wheeler. Evidence in Reply |
7. In my decision cited at footnote 2, I directed that these matters were to be heard together and that the Evidence in Support filed in relation to the Apple Application (and the declaration of Ms Hardacre filed during examination of the Healthkit Application) should be considered as regulation 21.19 and/or 21.15 information in relation to the Healthkit Application. I afforded Apple the opportunity to file further information if they so wished and they have not done so.
8. As a delegate of the Registrar of Trade Marks I heard submissions in relation to both substantive matters at a hearing in Canberra on 8 May 2016. Tom Cordiner of Counsel, instructed by Hugh McLaren of Meerkin & Apel, Lawyers, represented Healthkit. Angus Lang of Counsel, instructed by Robert Arnold of Baker & McKenzie represented Apple. I add, for the sake of completeness, that (following the hearing) I wrote to the parties observing that the trade marks co-exist on the trade marks register of the United States of America and suggested that settlements of these matters might be more commercially realistic to the parties rather than having potentially undesirable decisions thrust upon them. The parties have, however, been unable to reach agreement.
Onus
9. In each of these matters the respective opponents bear the onus of establishing one or more grounds of opposition on the balance of probabilities.[3]
[3] 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]; Telstra Corporation Ltd v Phone Directories Co Pty Ltd [2015] FCAFC 156 at [132]-[133].
The relevant dates at which the grounds under section 52 of the Act must be considered are as at the filing dates of the opposed applications[4] while noting that the priority date of the Apple Application is the relevant date in relation to that application.
[4] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592.
The Evidence
It will generally assist in an appreciation of the evidence if the following principle is first discussed.
Section 7 of the Act relevantly provides:
7Use of trade mark
(1)If the Registrar or a prescribed court, having regard to the circumstances of a particular case, thinks fit, the Registrar or the court may decide that a person has used a trade mark if it is established that the person has used the trade mark with additions or alterations that do not substantially affect the identity of the trade mark.
Note:For prescribed court see section 190.
The expression ‘additions or alterations’ in within subsection 7(1) was discussed by Yates J in Optical 88 Ltd v Optical 88 Pty Ltd (No 2)[5] at [256]:
Is the modified ‘707 mark a use of the ‘707 mark with additions or alterations not substantially affecting its identity? In order for that question to be answered affirmatively it is necessary to find that a total impression of similarity emerges from a comparison between the two marks: Carnival at 391; Shell at 414. In my view a total impression of similarity does emerge from a comparison of the modified ‘707 mark with the ‘707 mark itself. I therefore find that, by using the modified ‘707 mark, the applicant used the ‘707 mark with additions or alterations not substantially affecting its identity. However, the ‘707 mark is registered only for goods, not services.
[5] [2010] FCA 1380; (2010) 275 ALR 526; (2010) 89 IPR 457.
It follows that, if a party to proceedings relies on use of a trade mark which is not (as a minimum) substantially identical to that which is the subject of those proceedings, its position is likely to prove to be tenuous.
The Parties
Healthkit
Mr Wheeler states that he is ‘a Director and Co-Chief Executive Office[r]’ of Healthkit and has held that role since May 2009.
Concerning his company’s purported use of the Trade Mark, Mr Wheeler states:
At the Data Governance 2012 conference, held at Rydges on Swanston on 29 to 30 March 2012, [Healthkit] first publicly announced that it was changing its trading name from Specialist Link to “HealthKit”. I attach at Annexure 1 a copy of the slides that my co-founder and co-director Alison Hardacre presented with a presentation on the launch of HealthKit.
Here what Ms Hardacre apparently announced was the change of her company’s name from Specialist Link to Healthkit: there is no mention in the above passage of a change of trade mark.
I note that the slides annexed to the Wheeler declaration show Ms Hardacre’s presentation to have their emphasis upon services which involve teleconference attendance at, and the management/administration of, online patient/doctor consultations for those living in remote areas. The presentation stresses that the ‘product’ will have no software download for patients or practitioners and will be ‘accessible on any computer, in any setting’. In other words, the foreshadowed product was not yet available and was to be a software as a service (‘SaaS’) system. The PowerPoint presentation includes the slide:
Mr Wheeler continues:
[Healthkit] commenced using HealthKit as its trade mark for the promotion of its goods and services on 16 April 2012 and it launched its website at on 23 April 2012 (‘the HealthKit Website’). This website included the ability for a user to search for a practitioner and used an application programming interface to enable the search.
[Healthkit] first used the HealthKit trade mark in Australia in relation to computer software, including software relating to the management of health information, and the service of providing access to online databases, including databases containing health information (‘the First use goods and services’) in or about April 2012 (‘the Date of first use’) and it has continued to so use the mark to date.
Although Mr Wheeler states that Healthkit commenced use of the Trade Mark on 16 April 2012, it is not apparent from his declaration what that use is contended to have been. Examples of use which Mr Wheeler provides from the internet archive, Wayback Machine, show use of the trade mark which appears below:
(‘the Logo Trade Mark’)
Mr Wheeler explains:
I attach at Annexure 8 various print outs of archived screen shots of the website collected via the Wayback Machine tool located at from both prior and after the priority date. I confirm that subject to the absence of graphics in the screen shots of the earlier printouts, they accurately reflect the website as at the dates indicated in the URLs at the head of each printout or in the bar at the head of the page.
It is not clear whether the lack of graphics in the first Wayback Machine printout is due to the way in which the Healthkit website was indexed by the Wayback web crawler or whether the graphic was never there in the first place. Mr Wheeler’s explanation suggests that the graphics were present. Therefore, as regards use of the Trade Mark by Healthkit, this evidence is inconclusive and suggests that the use by Healthkit was, in fact, of the Logo Trade Mark.
I also note that use by Healthkit of the Trade Mark (in plain printed form) does not appear in Mr Wheeler’s evidence until it is shown on printouts dated 24 November 2015 (ie from a time well after the dates relevant to these matters and contemporaneous with the making of his declaration on 25 November 2015). It follows, significantly, that these annexures (both the Wayback Machine annexure and the contemporaneous annexure) do not show use of the Trade Mark by Healthkit before the priority date of the Apple Application; rather this material shows use by Healthkit of the Logo Trade Mark.
It is apparent from Mr Wheeler’s evidence that Healthkit envisions that in the future one of the outcomes of its SaaS system is to:
Build the largest health data set in the world, and use data securely and anonymously to solve the world’s biggest health problems, as health informatics - the science behind it - has more potential to save lives than drug innovations.
[and]
Health informatics (“big data for health”) has more potential to save lives than drug inventions, and HealthKit is building the largest, most unique health data set in the world in order to solve the world’s biggest health problems. At the same time, HealthKit’s cloud-based platform makes health treatment more effective, efficient and accessible for patients and practitioners all over the world.
These claims stem from the Healthkit website materials I have previously referred to which are apparently contemporaneous with the making of Mr Wheeler’s declaration. Accordingly, it is not apparent from the evidence that the ‘big data’ service had, by either of the dates relevant to this matter, been foreshadowed, offered, or provided to health researchers. Further, while Mr Wheeler provides confidential approximate annual gross sales figures for services he contends were provided under the Trade Mark, it is not apparent which of these occurred in Australia or in the fifteen countries in which he states that practitioners were (in 2012) accessing the system.
Mr Wheeler further states:
As at August 2014, approximately [redacted] Australians had downloaded and used [Healthkit’s] Health Kit software and hence used the First use goods and services in Australia. This figure has now grown to approximately [redacted]. As at 4 February 2014 (the priority date), the figure was approximately [redacted]. On each page of the Health Kit website, including the patient sign up page, is prominent Health Kit branding. I attach Annexure 15 which is a screen shot of the patient sign up page.
[Stress added]
The above statement is seemingly at odds with both Mr Wheeler’s prior description of Healthkit’s services (and Healthkit’s public assertions on its website) that the software it provides is not downloaded but is a SaaS product. Further, as the declaration only relates to services described as SaaS, it is not apparent from Mr Wheeler’s declaration what ‘goods’ Healthkit then provided. Additionally, the trade mark which appears at annexure 15, referred to above by Mr Wheeler, is the Logo Trade Mark:
Mr Wheeler explains that:
A sale is effected by a practitioner logging on to and opening an account and then, as required by them, purchasing SMS credits to use in advising patients of upcoming appointments via the HealthKit appointments system or when a patient is billed via the HealthKit payments system, a fee is deducted by HealthKit from payments received from patients. On each page of the Health Kit website, including the signup page and the two payment pages, are prominent HealthKit branding.
The ‘branding’ that Mr Wheeler refers to which appears on these pages is the Logo Trade Mark[6].
[6] The printout on which this appears is dated 24 November 2015.
Mr Wheeler also states:
The HealthKit trade mark has been used in relation to the First use goods and services by the Opponent overseas, including at the following events:
(a) The Health 2.0 Conference held in San Francisco, USA, on 8 to 9 October 2012, at which HealthKit had a physical stand with marketing collateral branded with HealthKit marks.
(b) The Strata Rx Conference in San Francisco, USA, on 16 to 17 October 2012 at which representatives of HealthKit attended.
I attach at Annexure 16 evidence of use of the HealthKit trade mark at those events.
Annexure 16 shows uses of the Logo Trade Mark at these conferences. Where the word ‘Healthkit’ does appear in plain type in materials apparently presented at the Strata Rx Conference, it is not clear whether these uses refer to the corporate person Healthkit, the business name Healthkit, or are uses of the Trade Mark. Further, these uses do not occur in Australia.
Before turning to Ms Hardacre’s declaration, I observe that while Mr Wheeler asserts that Healthkit’s First use goods are ‘computer software, including software relating to the management of health information, and the service of providing access to online databases, including databases containing health information’ his declaration establishes that Healthkit’s services were, prior to either of the relevant dates, ‘SaaS comprising medical practice administration and patient relations software’ (‘Healthkit’s Services’).
Ms Hardacre is a director of Healthkit. The import, content of, and exhibits to, her declaration are very similar to those in the declaration of Mr Wheeler. While the exhibits to her declaration differ in some respects to those of Mr Wheeler, it must be observed that these are of exceptionally poor quality, frequently illegible, and appear to be very poor quality photocopies. For example, Ms Hardacre exhibits brochures to her declaration which she states were designed in October 2012, but on which the written content is illegible and the visible trade mark is the Logo Trade Mark. Third party materials such as an article entitled ‘Women’s Agenda’, dated 18 February 2013, appear to confirm that Healthkit was using a trade mark, but in the light of the balance of Ms Hardacre’s declaration and that of Mr Wheeler which both focus on Heathkit’s use of the Logo Trade Mark, there are obvious problems in making the assumption that such articles refer to Healthkit’s use of the Trade Mark rather than of the Logo Trade Mark.
An annexure to Ms Hardacre’s declaration does include a response to an email mail-out, confirming that such email mail-outs took place but this is dated 11 April 2014, after the priority date of the Apple Application on 4 February 2014.
Apple
Concerning Apple, Mr La Perle, who is a Director in Apple’s Legal Department, explains:
Apple designs, manufactures and markets mobile communication and media devices, personal computers and portable digital music players, and sells a variety of related software, services, accessories, networking solutions and third-party digital content and applications.
Apple’s products and services include iPhone, iPad, Mac, iPod, Apple Watch, Apple TV, a portfolio of consumer and professional software applications, iOS, OS X and Watch OS operating systems, iCloud, Apple Pay and a variety of accessory, service and support offerings. Apple also sells and delivers digital content and applications through Apple Music, the iTunes Store, App Store, Mac App Store, and iBooks Store.
Apple sells its products in Australia and worldwide through retail stores, online stores and direct sales force, as well as through third-party cellular network carriers, wholesalers, retailers and value-added resellers. In addition, Apple sells a variety of third-party Apple compatible products, including application software and various accessories through its online and retail stores. Apple sells to consumers, small and mid-sized businesses and education, enterprise and government customers.
Concerning Apple’s use of the Trade Mark Mr La Perle states:
Apple’s HEALTHKIT product is computer software used by software developers to develop health and fitness software applications that share health and fitness data with other software applications (HEALTHKIT product).
The accompanying application for end users is named HEALTH (Health app).
Apple announced its HEALTHKIT product and Health app at the keynote at the World Wide Developers Conference in San Francisco, USA on 2 June 2014[7] (‘the Keynote’).
[7] It will be noted that the priority date for the Healthkit Application is 3 June 2014.
Apple’s website at has a section devoted to software developers at The HEALTHKIT product pages are at 100 Australians registered to attend and attended the World Wide Developers Conference and would have been present during the Keynote.
The Keynote was avidly followed in real time by developers and Apple enthusiasts around the world. By way of example, attached at Annexure TRL-3 are pages from the website at entitled Apple WWDC 2014 Live Blog: Follow All the News As It Happened.
[…]
The HEALTH app is available on the following Apple products:
a) iPhone 4s or later iPhone devices; and
b) iPod touch (5th generation) or later iPod touch devices.
(‘Electronic Devices’)
The HEALTH app can also collect data from Apple Watch devices and from other Bluetooth devices connected to third party apps.
My understanding of Apple’s HEALTHKIT product is that it comprises a large number of separate strings of computer code which function as ‘building blocks’ (‘Development Software’) or as a ‘library’ which independent developers use to build ‘apps’, or ‘applications’ with various differing functions which may be purchased from Apple by the users of the Electronic Devices to monitor various aspects of their fitness and health on those Electronic Devices.
The Apple Healthkit product is not SaaS – it is computer software which occurs in Class 9 of the International (Nice) Classification of Goods and Services (‘Nice’) (as opposed to Healthkit’s SaaS medical administration software service which is appropriately classified in Class 42 of Nice).
Mr Arnold is a partner in the firm of Baker & McKenzie, solicitors for Apple. Mr Arnold’s declaration presents evidence about the size of the potential market for Healthkit’s SaaS Services in Australia.
Dr Farrow is a director of Farrow Norris Pty Ltd and has extensive experience as both a practitioner and academic in information technology. Dr Farrow’s declaration outlines his views about the nature of the parties’ products and concludes:
Apart from generically having something to do with health there seems to be little overlap between the offerings and intended audiences of the HealthKit Practice Management Software and the HealthKit Application Development Framework […].
I will discuss other aspects of the parties’ evidence as it becomes relevant to the grounds.
In my consideration, it is logical to decide these matters in the order of their priority dates and to first discuss the Apple Application and the grounds under 58, 60, 42, and 59 of the Act.
The Apple Application
Section 58
Section 58 of the Act provides:
58Applicant not owner of trade mark
The registration of a trade mark may be opposed on the ground that the applicant is not the owner of the trade mark.
Note:For applicant see section 6.
Section 17 of the Act defines the term ‘trade mark’:
17What is a trade mark?
A trade mark is a sign used, or intended to be used, to distinguish goods or services dealt with or provided in the course of trade by a person from goods or services so dealt with or provided by any other person.
Note:For sign see section 6.
Ownership of a trade mark in Australia may arise in two ways: firstly, by use of a sign as a trade mark in Australia by a person or under the authority of that person; or, secondly, by the filing of an application for registration as a trade mark. In the case of a dispute as to the ownership of a trade mark, the first person to publically use the trade mark in the course of trade in relation to particular goods or services, or to apply to register it as a trade mark for those goods or services (whichever is the earlier) is the owner of the trade mark. In order to displace a statutory claim to ownership, an opponent must show first use of a trade mark which is at least substantially identical[8] to the impugned trade mark in Australia in relation to goods or services which are, as a minimum, ‘the same kind of thing’[9] by a person other than the applicant.
[8] Carnival Cruise Lines Inc v Sitmar Cruises Ltd [1994] FCA 936; (1994) 120 ALR 495; (1994) 31 IPR 375; [1994] AIPC 91-049 at [62].
[9] Re Hicks’ Trade Mark (1897) 22 VLR 636 (‘Hicks’).
I will first consider Healthkit’s use of the Trade Mark.
The only unambiguous examples of uses of a trade mark by Healthkit which obviously precede the priority date of the Apple Application are of the Logo Trade Mark in the form that it appears at paragraph [20], above, within Ms Hardacre’s presentation to the Data Governance 2012 Conference on 29 to 30 March 2012 and the Logo Trade Mark as it appears on the Wayback Machine Printouts. Any corroborated[10] uses of the Trade Mark by Healthkit in plain typed form within Mr Wheeler’s declaration appear in material which is contemporaneous with the making of it and thus after the priority date of the Apple Application. It follows that Heathkit has not established that it used the Trade Mark before the priority date of the Apple Application
[10] I will return to a discussion of other asserted uses of the Trade Mark, below.
In terms of the discussion above, at paragraph [45], the question becomes whether the Logo Trade Mark and the Trade Mark are substantially identical and that Healthkit can rely on the Logo Trade Mark to establish ownership of the Trade Mark through first use of it in Australia. In discussing ‘substantial identity’ in Shell Co of Australia Ltd v Esso Standard Oil (Australia) Ltd[11] Windeyer J said:
In considering whether marks are substantially identical they should, I think, be compared side by side, their similarities and differences noted and the importance of these assessed having regard to the essential features of the registered mark and the total impression of resemblance or dissimilarity that emerges from the comparison. “The identification of an essential feature depends”, it has been said, “partly on the Court’s own judgment and partly on the burden of the evidence that is placed before it”: de Cordova v. Vick Chemical Co. (1951) 68 RPC 103, at p 106. Whether there is substantial identity is a question of fact: see Fraser Henleins Pty Ltd v. Cody [1945] HCA 49; (1945) 70 CLR 100, per Latham C.J. (1945) 70 CLR, at pp 114, 115, and Ex parte O’Sullivan; Re Craig (1944) 44 SR (NSW) 291, per Jordan C.J. (1944) 44 SR (NSW), at p 298, where the meaning of the expression was considered.
[11] [1963] HCA 66; (1963) 109 CLR 407; [1962] ALR 304; 35 ALJR 355; 1B IPR 523 at [12].
The trade marks in question appear side-by-side, below:
HEALTHKIT
In my consideration, leaving to one side the issues of colour and variations of font, a total impression of dissimilarity emerges from a side by side comparison of the trade marks. The graphical device within the Logo Trade Mark of apparently overlapping briefcases bearing the symbol of a white cross is immediately striking to the eye and on its own dictates the immediate impression of the trade marks is that they are dissimilar. I add, for the sake of completeness, that the use of the Logo Trade Mark is not in my consideration the use of two trade marks together as in Wellness Pty Ltd v Pro Bio Living Waters Pty Ltd[12]. The device component within the Logo Trade Mark is not, in the context of the evidence, functioning as a ‘house mark’, or a feature used separately from the Logo Trade Mark, but functions as an essential element of the Logo Trade Mark.
[12] [2004] FCA 438; (2004) 61 IPR 242; [2004] AIPC 91-983; [2005] ALMD 363.
Other potential uses of the Trade Mark relied upon by Healthkit are in references to it winning an award at iAwards in 2012. The use is on a print-out apparently from the iAwards website. However, some uncertainty exists as to whether the reference to ‘Healthkit’ in this material annexed to Mr Wheeler’s declaration (and that of Ms Hardacre) is a reference to the Trade Mark or to the Logo Trade Mark or to Healthkit the corporate entity. Further doubt is introduced as to whether this use qualifies as a use of a trade mark as the use is by a person other than Healthkit (or an authorised user) in terms of sections 7 and 17, above.
I also observe that third party references to a trade mark might be useful in establishing reputation in proceedings before the Registrar if the form of the trade mark is settled – however, such references shed no light here on the form of the trade mark which might have been used by Healthkit.
I am minded of the principle stated by Wilberforce J, in Nodoz Trade Mark[13], that if a person relies on one single act of use of the trade mark, then that single act ought to be established by ‘if not conclusive proof, at any rate overwhelmingly convincing proof’. Here, in my consideration, the evidence filed by Healthkit is of insufficient weight to satisfy the Registrar that it used the Trade Mark before the priority date of the Apple Application.
[13] (1962) RPC 1 at 7.
In my view, therefore, the ground under section 58 of the Act has not been established by Healthkit.
For completeness, I further observe that (laying issues of trade mark use to one side) it is apparent that any trade mark use made by Healthkit before the priority date of the Apple Application was solely in relation to Healthkit’s Services and that it argues (in terms of Hicks) that these are ‘the same kind of thing’ as Apple’s goods ‘computer software’.
In Colorado Group Ltd v Strandbags Group Pty Ltd[14] the Full Bench quoted with approval the lower Court (albeit in relation to goods):
Authoritative discussions show that this extension to goods of the same kind is confined to goods that are essentially the same, though they may differ in size, shape and name. This point is emphasised in Jackson v Napper where Stirling J gave some attention to this question in considering the difference between an axe and a hatchet. He said (at 177-178):
[The Respondents] said there was a little difference in the size, as I understand, and a little difference in the shape; but can it be, that a man having made goods of a particular size, which might be designated as small axes – which in fact is the definition given in Johnson’s Dictionary of a hatchet – is to be precluded from putting his mark upon things of the same description or belonging to the same class of goods, but of a different size and a different shape? The objection of course is founded on Edwards v Dennis [30 Ch D 454], in which it was held that a man having registered a mark for iron goods and having manufactured, I think, sheet-iron, and applied his mark to that, was not entitled to stop another man from using the same mark in respect of iron wire which he had never used at all. That to my mind is a totally different thing from saying that a man who has used a mark on hatchets of a particular size and shape is not entitled to use a trade-mark as applied to an axe, which is a thing of the same kind but a little different in size and a little different in shape. No doubt at first the classes of goods under the Trade Marks Act were drawn too wide, and that has led to difficulty, but if I were to accede to this notion and say that because a man had merely manufactured small axes, he was not to be allowed to register in respect of axes, the logical consequence would be that he would have to register the shapes and sizes of everything to which he attached his mark. That was an inconvenience that was never intended to be imposed on an applicant, and I hold that a man who has manufactured and applied his mark to small axes is entitled to register it in respect of axes generally.
[14] [2007] FCAFC 184; (2007) 164 FCR 506; (2007) 243 ALR 127; [2008] AIPC 92-272; (2007) 74 IPR 246
At the hearing of these matters Mr Cordiner, for Healthkit, argued that software as goods and SaaS are, in essence, ‘the same kind of thing’ and are hence as similar as axes and hatchets. The only real difference, he argued, was in the payment of a license fee in relation to software as goods: very often, once a license fee is paid, Mr Cordiner contended, the ‘goods’ remain in the cloud. After careful consideration of the issues, I am not convinced either one way or the other. It seems to me that it does not necessarily follow that (for example) all ‘software as goods’ in Class 9 is necessarily ‘the same kind of thing’: is the software that runs an intelligent home ‘the same kind of thing’ as the software that runs the billing and invoicing for a business? If this hypothetical example (which involves goods in the same class) might not involve goods which are ‘the same kind of thing’, what does this say of the situation before me?
Healthkit has filed no evidence in this regard and there is nothing more than submission upon which I might base such a decision. The onus is on Heathkit to make out its grounds of opposition and, in the absence of cogent evidence on the subject, it is appropriate to find that the evidence does not establish that the ‘SaaS’ and ‘software as goods’ products of the parties are ‘the same kind of thing’.
In summary, Healthkit has not, to the Registrar’s satisfaction, established use of the Trade Mark before the priority date of the Apple Application; neither has it established that Healthkit’s Services are the ‘same kind of thing’ as Apple’s software goods.
Healthkit has not established the ground of opposition under section 58.
Section 60
Section 60 of the Act provides:
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.
Healthkit must establish firstly that a trade mark upon which it relies had a reputation in Australia at the priority date (4 February 2014) of the Apple Application and, secondly, that because of that reputation the use of the Trade Mark by Apple would be likely to deceive or cause confusion.
In McCormick & Co Inc v McCormick[15] (‘McCormick’) Kenny J said of reputation:
What is intended by the word “reputation” in s 60? The word is defined in The Macquarie Dictionary as follows:
reputation ... 1. the estimation in which a person or thing is held, esp. by the community or the public generally; repute ... 2. favourable repute; good name ... 3. A favourable and publicly recognised name or standing for merit, achievement, etc. ... 4. The estimation or name of being, having done, etc, something specified.
Cf. The Oxford English Dictionary. In s 60, the word is, I think, apt to refer to “the recognition of the McCormick & Co marks by the public generally”.
[15] [2000] FCA 1335; (2000) 51 IPR 102; [2000] AIPC 38-192 at [81].
I note that the expression ‘the public generally’ might be subject to some qualification. Heerey J in Le Cordon Bleu B.V. v Cordon Bleu International Ltee[16] said (albeit in relation to paragraph 28(a) of the now superseded Trade Marks Act 1955) that the reputation required to be demonstrated was:
one of which a significant number of persons were aware…What is ‘significant’ or ‘substantial’ will depend on the nature of the goods or services in question. For some highly specialised products, awareness among a few thousand persons, or even less, might be sufficient.
[16] [2000] FCA 1587; (2000) 50 IPR 1.
Here, in his declaration, Mr Wheeler refers to the ‘target market’ of Healthkit’s Services but does not expressly state what that target market was at the relevant date. I take it to have been primarily medical practices and, once a practice was using the SaaS medical administrative system, the patients of that practice – providing they wished to avail themselves of the patient-related services. Mr Arnold’s declaration establishes that there were, at the priority date, some 50,000 general practitioners in private practice in Australia and it is presumably safe to assume that the entirety of the Australian population was potentially their patients.
Concerning the assessment of reputation Kenny J went on in McCormick[17] to state:
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: see, e.g., Isuzu-General Motors Australia Ltd v Jackeroo World Pty Ltd (1999) 47 IPR 198; Marks & Spencer plc v Effem Foods Pty Ltd (2000) AIPC 91-560; Photo Disc Inc v Gibson (1998) 42 IPR 473; and RS Components Ltd v Holophane Corp (1999) 46 IPR 451. This Court has followed this approach as well, acknowledging that public awareness of and regard for a mark tends to correlate with appreciation of the products with which that mark is associated, as evidenced by sales volume, amongst other things. Thus, in Toddler Kindy Gymbaroo Pty Ltd v Gymboree Pty Ltd [2000] FCA 618 (“Gymboree”), Moore J accepted at [94] that the applicant had established a reputation for the purposes of s 60 solely on the basis of use and promotion of the relevant mark. Another example of this approach is Nettlefold Advertising Pty Ltd v Nettlefold Signs Pty Ltd (1997) 38 IPR 495 (“Nettlefold”), in which Heerey J relied upon the public visibility of the applicant’s marks over approximately two decades as well as a $100,000 promotional campaign in finding that a reputation for the purposes of s 28 of the 1955 Act existed.
[17] Ibid at [86].
As I have discussed, above, the evidence does not establish use of the Trade Mark in Australia by the Applicant before the priority date of the Apple Application. The evidence, rather, establishes use of the Logo Trade Mark by Healthkit in Australia.
The examples of use of the Logo Trade Mark before the priority date of the Apple Application are those from Wayback Machine and that from Ms Hardacre’s presentation to the Data Governance 2012 conference, held at Rydges on Swanston on 29 to 30 March 2012. Mr Wheeler characterises both of these uses as being uses of the Trade Mark.
However, I have found, at paragraph [50], above, that the Trade Mark and the Logo Trade Mark are not substantially identical. While it is not necessary for the purposes of section 60 that the Opponent establish that a trade mark which is substantially identical, or even deceptively similar, to Apple’s trade mark, the misidentification of Healthkit’s trade marks persists throughout the declarations for Healthkit and makes it unclear what particular trade mark is referred to in the evidence. For example, whilst Mr Wheeler attributes turnover figures to the Trade Mark, his declaration does not establish that Healthkit has relevantly used that trade mark – the unambiguous examples of use the Trade Mark by Healthkit are all from after the priority date of the Apple Application and hence of little assistance in establishing whether that particular trade mark had acquired a reputation before the priority date.
Additionally, when considering those turnover figures for ‘goods and services’ sold or provided under what I take to be the Logo Trade Mark it is not clear what proportion of these figures stem from services provided in Australia as Mr Wheeler states that practitioners in 15 countries then accessed his company’s services. Nor is it apparent from Mr Wheeler’s declaration what proportion of the Australians who have accessed the SaaS medical administrative system are medical practices or alternatively patients or, indeed, whether the figures given might include repeat ‘visits’ by either doctors and/or their patients.
While Mr Wheeler also states that the main promotional activity undertaken by Healthkit is email mail-outs, the bulk of these in evidence occurred after the priority date of the Apple Application. The meta-data for these emails is annexed to Mr Wheeler’s declaration; however, this is largely in code and it is difficult to understand what a recipient of one of these emails might have seen although an ‘English language’ version of the first email mail-out is provided albeit from a time contemporaneous with the making of Mr Wheeler’s declaration (and hence after the relevant date). Similar observations apply to the email evidence in Ms Hardacre’s declaration and the corroboration in the form of a response from a potential customer is from after the priority date.
Additionally, there is in Mr Wheeler’s declaration an article which appeared in the Herald Sun on 10 November 2012 about Ms Hardacre which mentions ‘HealthKit’; there are screenshots of a YouTube® video of uncertain date on which the web address Healthkit.com appears as well as the Logo Trade Mark; there is mention of Healthkit (apparently as a business name) in an emailed ‘bio’ sent by Ms Hardacre on 1 April 2012 to a “Mobile Health” event promotion along with material which it appears that Ms Hardacre presented to the event which includes the Logo Trade Mark.
On this basis I would conclude that any reputation that the evidence establishes for the Logo Trade Mark was not significant at the relevant date and that it existed solely in relation to Healthkit’s Services.
The second requirement under section 60 is that an opponent establishes that the use of the Trade Mark by the applicant would, because of the reputation of the trade mark upon which the opponent relies, deceive or cause confusion.
In Pottle Productions Inc v Rute Ithalat Ve Ihracat Anonim Sirketi[18] the Registrar’s delegate observed that:
The assessment of the likelihood of deception or confusion under section 60 is informed by the strength of the reputation of the Opponent’s trade mark(s), the inherent distinctiveness thereof, the degree of similarity between the trade marks under consideration and the nexus or connection between the goods and/or services of the parties. Each of these is a variable and it is possible that a trade mark’s reputation might be sufficiently strong and the degree of similarity to an opposed trade mark be so great (particularly where the trade marks are inherently distinctive) that confusion or deception will be a likelihood where very little, if any, nexus or connection exists between the goods and/or services under consideration.
[18] [2012] ATMO 124 at [40]
The assessment of the likelihood of deception or confusion is informed by the factors discussed Registrar of Trade Marks v Woolworths[19] (‘Woolworths’) by French J. With references to ‘deceptive similarity’ redacted this reads:
(i) […] 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 […] 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] HCA 43; (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.”
[19] [1999] FCAFC 1020; [1999] FCA 1020; (1999) 93 FCR 365; (1999) 45 IPR 411; [1999] AIPC 91-499 at [50].
I am thus to consider likelihood of deception or confusion arising from the notional use of the Trade Mark by Apple to the full extent of any registration which might ensue in the light of the actual use of the Trade Mark or the Logo Trade Mark by Healthkit in relation to Healthkit’s Services.
Further, the words ‘confuse’ and ‘deceive’ refer to different forms of bewilderment. In Pioneer Hi-Bred Corn Co v Highline Chicks Pty Ltd[20] Richardson J said, in the New Zealand Court of Appeal :
Deceived’ implies the creation of an incorrect belief or mental impression and ‘causing confusion’ may go no further than perplexing or mixing up the minds of the purchasing public .... Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the applicant’s mark come from some other source and confused to being caused to wonder whether that might not be the case.
[20] [1979] RPC 410, at 423.
In Radio Corp Pty Ltd v Disney[21] Rich J said of the word ‘confusion’:
In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the name “Walt Disney” summons up a picture of “Mickey Mouse” and the picture of Mickey Mouse reminds them of “Walt Disney”. The foundation of this is authorship no doubt. But somehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of “Mickey Mouse” with “Walt Disney”. This being so, it is, I think, impossible for the appellant to negative all likelihood of confusion. It is no part of our duty to state in definite terms precisely how the public will be misled or what kind of connection they will impute. Confusion involves indefiniteness of ideas.
[21] 1937] HCA 38; (1937) 57 CLR 448 at 454.
In balancing the factors which are before the Registrar, I make the following observations:
· The evidence does not support the proposition that the Trade Mark had a reputation at the relevant date;
· The evidence establishes the reputation of the Logo Trade Mark to have been slight at the relevant date;
· At the relevant date the uptake of Healthkit’s services offered under the Trade Mark was by a seemingly very low fraction of the potential marketplace in Australia whether those figures are considered to be constituted by either doctors or their patients or a combination thereof;
· The expression ‘Healthkit’ constituting the parties’ trade marks, whilst having sufficient prima facie inherent adaptation to be considered registrable, has a descriptive taint in relation to the parties’ respective goods and services;[22]
· As a corollary of the foregoing observation, the device element within the Logo Trade Mark is prima facie distinctive and as such forms a distinguishing element by which the Healthkit services can be recognised and distinguished;
· The marketplace for Healthkit’s Services is distinct and presents as a ‘free’ service (although some charges might be deducted on medical payments by Healthkit);
· The Apple specification in Class 9 includes ‘database management software’ which, when notional use is considered, includes ‘database management software’ which might include such for use by doctors’ practices – however, this is as ‘goods’ in Class 9 upon which payment of a license fee (or agreement to abide by the terms of a license) is generally involved as compared with the Healthkit system which is SaaS in Class 42.
[22] Cf ‘Eurovogue’: Conde Nast Publications Pty Ltd v Taylor [1998] FCA 864; (1998) 41 IPR 505; [1998] AIPC 37-628.
Whilst Mr Wheeler in his declarations has provided what he asserts are instances of confusion, in the form of emails from third parties, I do not agree that these establish confusion between the trade marks of the parties, or confusion stemming from the slight reputation of the Logo Trade Mark. Rather, the emails might show only a misapprehension on the part of their senders as to the nature or extent of the services provided by Healthkit or mistakes in identifying a correct email address from a general inquiry on a search engine for the term ‘healthkit’.
In Blount Inc v Registrar of Trade Marks[23], Branson J observed:
Where the Act requires the Registrar to be “satisfied” of any matter, it is to be understood as requiring that he or she be persuaded of the matter according to the balance of probabilities (Rejfeck v McElroy [1965] HCA 46; (1965) 112 CLR 517 at 521). That is, that the Registrar be persuaded, having given proper consideration to those factors and circumstances that the Act requires him or her to give consideration to, that such matter is more probable than not.
[23] [1998] FCA 440; (1988) 40 IPR 498 at 504.
In balancing the factors listed at paragraph [80], above, I am not of the view that the Registrar could be satisfied that the use of the Trade Mark by Apple would lead to ‘a real tangible danger’ that it would be likely to deceive or cause confusion because of the reputation of the Healthkit Logo Trade Mark at the priority date of the Apple Application.
Healthkit has not established its ground under section 60 of the Act.
Section 59
In its Statement of Grounds and Particulars, Healthkit contends:
The Applicant does not, and as at the Priority date did not, intend to use the HEALTHKIT trade mark in relation to the following goods specified in the Applicant’s Application (the s. 59 goods):
Class 9: Computers; computer peripheral devices; computer hardware; computer gaming machines; hand held computers; tablet computers; personal digital assistants; electronic organizers; electronic notepads; electronic book readers; handheld electronic game units adapted for use with an external display screen or monitor; handheld digital electronic devices; handheld mobile digital electronic devices capable of providing access to the Internet and for the sending, receiving, and storing of telephone calls, faxes, electronic mail, and other digital data; electronic handheld units for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; sound recording and reproducing apparatus; MP3 and other digital format audio players; digital audio recorders; digital video recorders and players; audio cassette recorders and players; video cassette recorders andplayers; compact disc recorders and players; digital versatile disc recorders and players; digital audio tape recorders and players; radios, radio transmitters, and receivers; audio, video, and digital mixers; audio amplifiers; audio receivers; audio decoders; car audio apparatus; earphones, headphones; audio speakers; microphones; audio components and accessories; modems; network communication apparatus; electronic communication equipment and instruments; audiovisual teaching apparatus; optical apparatus and instruments; telecommunications apparatus and instruments; global positioning system (GPS) devices; telephones; wireless communication devices for voice, data or image transmission; cables; apparatus for data storage; magnetic data media; chips, discs and tapes bearing or for recording computer programs and software; facsimile machines; cameras; batteries; televisions; television receivers; television monitors; set top boxes; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; electrical and electronic connectors, couplers, wires, cables, chargers, docks, docking stations, interfaces, and adapters for use with all of the aforesaid goods; computer equipment for use with all of the aforesaid goods; electronic apparatus with multimedia functions for use with all of the aforesaid goods; electronic apparatus with interactive functions for use with all of the aforesaid goods; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods; covers, bags and cases adapted or shaped to contain all of the aforesaid goods; navigational instruments; apparatus to check stamping mail; cash registers; mechanisms for coin-operated apparatus; dictating machines; hemline markers; voting machines; electronic tags for goods; prize selection machines; weighing apparatus and instruments; measures; electronic notice boards; measuring apparatus; optical apparatus and instruments; wafers (silicon slices); integrated circuits; fluorescent screens; remote control apparatus; light conducting filaments (optical fibers); electric installations for the remote control of industrial operations; lightning arresters; electrolyzers; fire extinguishers; radiological apparatus for industrial purposes; life saving apparatus and equipment; whistle alarms; sunglasses; animated cartoons; egg-candlers; dog whistles; decorative magnets; electrified fences; electrically heated socks
Class 14: Horological and chronometric instruments; watches; clocks; timepieces; chronographs for use as timepieces; chronometers; watchstraps; watch bands; cases for watches, clocks, and horological and chronometric instruments; parts for watches, clocks, and horological and chronometric instruments; jewellery
PARTICULARS
[Apple] has commenced use of the HEALTHKIT trade mark in Australia and overseas and made various public statements on its intended future use. Such use and mention of intended future use has been entirely in relation to software and no other goods or services. [Apple’s] lack of intention to use HEALTHKIT in relation to the s. 59 goods is inferred from this conduct. Further particulars may be given after evidence and any compulsive process for the provision of information or documents.
Section 59 of the Act provides:
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.
The application of the law as it pertains to this ground was summarised by Hearing Officer Kirov in Funds Management Pty Ltd v Paul McMahon[24]:
Relevant aspects of the s 59 ground of opposition generally were addressed in some detail in two decisions issued by the Federal Court in 2010, firstly by the Full Court (Keane CJ, Stone and Jagot JJ) in Food Channel Network Pty Ltd v Television Food Network GP[25] (“Food Channel”), followed by Dodds-Streeton J in Suyen Corporation v Americana International Limited[26] (“Suyen”). I draw on these two decisions in particular in the analysis which follows.
It has long been accepted, […] that the very filing of an application to register a trade mark is prima facie evidence of an applicant’s intention to use that mark for the goods or services of the application. As Dodds-Streeton J put it in Suyen at [193], “an application for registration of a trade mark has given rise to a presumption that the requisite intention to use the mark exists”. Noting that “a number of recent authorities have...endorsed its continuing application”, (“most significantly” Food Channel), Her Honour continued at [197]:
The presumption was first recognised under legislation which cast on the applicant the burden of establishing entitlement to registrability. Although the applicant no longer bears that burden, nothing in the language of s 27 or any other relevant provision of the present Act suggests a legislative intention to depart from the long-established presumption of intention to use recognised under previous legislation. To the contrary, as possession of the requisite intention is a pre-condition of entitlement to apply, it may readily be presumed from the fact of application.
The presumption of an intention to use deriving solely from the act of filing the application is a prima facie presumption, which can be rebutted by slight evidence. Inferences can be drawn to indicate a lack of intention to use. Once rebutted, the onus of proof shifts to the Applicant ...
Where an Applicant for registration has been put on notice that its intention to use the mark is in issue, and it has not responded to the Opponent’s evidence, a finding of lack of intention may be made[27].
Moreover, although Food Channel and Suyen confirmed that the relevant date for assessing an applicant’s intention to use is, as with all opposition grounds, the filing date, they also affirm that an applicant’s actions after the filing date may be relevant in drawing an adverse inference about the intention to use as at the filing date. As Dodds-Streeton J put it in Suyen at [147]:
There has been conflicting, albeit relatively sparse, authority and commentary on whether the requisite intention under s 59 is to be assessed at the date of filing the application to register the trade mark or at the time of the opposition proceeding (whether it be on the date of filing the notice of opposition, the hearing of the notice of opposition or the last filing of evidence in relation to it). Very recently, after the hearing of this appeal but before the publication of these reasons, the Full Federal Court in [Food Channel] held that the intention must exist at the date of the application, although the Full Court acknowledged that “use (or non-use) after the date of application may be relevant in drawing inferences as to the issue of intention as at the date of application”: at [74].
[24] [2016] ATMO 52 at [22].
[25] [2010] FCAFC 58; (2010) 86 IPR 437.
[26] [2010] FCA 638; (2010) 87 IPR 262.
[27] Phillip Morris Products SA v Sean Ngu [2002] ATMO 96; Tommy Hilfiger Licensing Inc v Tan (2002) 60 IPR 137; Health World Ltd v Shin-Sun Australia Pty Ltd [2008] FCA 100 at [162]; Shanahan 4th edition at [50.2320].
Here Healthkit relies on Apple’s keynote announcement on 2 June 2014 that it intended to use the Trade Mark in relation to Development Software for its Health app and asks that the Registrar draw an inference that Apple did not intend to use the Trade Mark in relation to what Healthkit terms ‘the s 59 goods’.
Although the speaker at the keynote announcement addressed Apple’s intention to use the Trade Mark in relation to Development Software, he did not, apparently, rule out the possibility that Apple might use the Trade Mark in relation to other goods; nor did he exclude the authorised use of the Trade Mark. I have some difficulty with the proposition that (for example) a man who states his intention to use a trade mark in relation to sports shorts is negativing his intention to also use that trade mark in relation to tee-shirts or sporting footwear when the capacity to do so is clearly within his means and is a part of the logical growth of the brand. Apple, for instance, has a market capitalization of over $700 billion and a large portfolio of products.
As Mr Lang submitted at the hearing:
There is no evidence of lack of capacity, of an admission of a lack of any broader interest or of the real interest being in any different market for these other goods. Indeed the evidence indicates that there is such capacity. In particular, [Apple’s] evidence establishes that [Apple] designs, makes and markets a very wide range of products and services which it sells worldwide to a wide range of customers. It also establishes that [Apple] is an innovator and leader in the field of technology. It is clear from this evidence that [Apple’s] goods and services extend well beyond software products and that it has the resources to innovate across a range of goods and services, a range that has expanded over the years. This evidence establishes that [Apple] had the capacity to use the HEALTHKIT trade mark across a wide range of goods as at the filing date.
Further, whilst the Statement of Grounds and Particulars couches the contention in terms of Apple’s use of the Trade Mark after the priority date, what the Registrar is to consider is the intention as it existed at the priority date.
In my consideration, the evidence before the Registrar is not sufficient to transfer the onus of proof onto Apple.
Healthkit has not established the ground of opposition under section 59 of the Act.
Section 42
In its Statement of Grounds and Particulars Healthkit contends:
By reason of the Health Kit reputation, the use in Australia of HEALTHKIT in relation to any and all of the goods for which registration is sought would constitute a representation in trade or commerce that
(a) those goods are the Opponent’s goods; and/or
(b) those goods have the Opponent’s sponsorship or approval; and /or
(c) the user of HEALTHKIT is the Opponent; and/or
(d) the user of HEALTHKIT is affiliated with the Opponent,
and would lead consumers, in particular Australian mental and allied health practitioners in private practice, to believe any and all of those representations.
The Applicant is not authorised by the Opponent to use HEALTHKIT in relation to any or all of the goods for which registration is sought, nor is the Applicant otherwise affiliated with the Opponent.
By reason of the two preceding paragraphs, the use in Australia of HEALTHKIT in relation to any and all of the goods for which registration is sought, in particular such use directed to Australian mental and allied health practitioners in private practice, would:
(a) be contrary to sections 18 and 29 of Schedule 2 of the Competition and Consumer Act 2010 (Cth); and
(b) constitute the tort of passing off,
and thereby be contrary to law within the meaning of section 42(b) of the Act.
Section 42 of the Act provides:
42Trade mark scandalous or its use contrary to law
An application for the registration of a trade mark must be rejected if:
(a)the trade mark contains or consists of scandalous matter; or
(b)its use would be contrary to law.
The onus is on the Opponent to establish that use of the Applicant’s trade mark would be, rather than could be, contrary to law on the balance of probabilities.[28]
[28] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.
In the present matter the Opponent has failed to establish a ground of opposition under section 60 of the Act. As the test for establishing misleading or deceptive conduct under section 18 of the Australian Consumer Law (‘ACL’) is a more stringent test than that for a likelihood of deception or confusion under section 60,[29] I am satisfied that the Opponent has also failed to establish that the use of the Applicant’s Trade Mark would be contrary to section 18 of the ACL.
[29] See, eg: Parkdale Custom Built Furniture Pty Ltd v Puxu Pty Ltd (1982) 149 CLR 191 at 198 (Gibbs CJ); Ownit Homes Pty Ltd v Ownit Conveyancing Pty Ltd [2005] ATMO 47 at [36];.
Where a trade mark does not run afoul of section 18 of the ACL, neither will it run afoul of section 29 of the ACL, nor the tort of passing off. In Pacific Publications Pty Ltd v IPC Media Pty Ltd, Beaumont J considered - in connection with the superseded Trade Practices Act1974 (‘the TPA’) - that ‘the Court’s conclusion on sections 52 would necessarily carry with it a conclusion on sections 53(c) and (d)’[30]. Section 53(d) of the TPA is the equivalent provision to section 29(1)(h) of the ACL. Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation[31] also addressed the relationship between section 52 of the TPA and passing off. His Honour considered that:
The scope for the operation of s 52 will thus be broader than that involved in the tort of passing off so that in a case such as the present where the claim is for the protection of the reputation in a name against the use of that name by another, failure to succeed under s 52 or s 53 will invariably mean that proceedings for passing off would likewise fail.
[30] [2003] FCA 104, [107].
[31] [1989] FCA 506, [40] (citations omitted).
It follows that Healthkit’s proposition that the use of the trade mark would amount to passing off under the common law must likewise fail. Healthkit has not established a ground of opposition under paragraph 42(b) of the Act.
The Healthkit Application
Section 44
In its Statement of Grounds and Particulars Apple contends:
(1) The Opponent is the owner of the earlier trade mark applications listed […] below.
1637556 (9) HEALTH KIT, having a priority date of 4-FEB-2014
1683050 (10) (42) HEALTHKIT, being a divisional of the above and having a priority date of 4-FEB-2014 [now lapsed]
(Opponent’s Prior Pending Trade Marks).
(2) The Opposed Trade Mark is deceptively similar to/substantially identical with the Opponent’s Prior Pending Trade Marks.
(3) The goods/services in respect of which the Opponent’s Prior Pending Trade Marks are pending are similar or closely related to the goods/services claimed under the Opposed Trade Mark.
(4) The Opponent’s Prior Pending Trade Marks were cited against registration of the Opposed Trade Mark (Citation Objection).
I note that Apple filed a further divisional application of the Apple Application (details of which appear below) and requested that the Statement of Grounds and Particulars be amended to reflect its reliance upon this application:
Application No: 1815328
Priority Date: 4 February 2014
Goods/Services: Class 10: Health, fitness, exercise, and wellness sensors, monitors and displays; medical apparatus and devices, none being extractors (medical apparatus)
Class 42: Health, fitness, exercise, and wellness monitoring and assessment services; providing information in the fields of health, fitness, exercise, and wellness; providing a website featuring information on health, fitness, exercise, and wellness.
Trade Mark: HEALTHKIT
I allow the amendment to the Specification of Grounds and Particulars and observe both that Healthkit was aware of the requested amendment prior to the hearing of the matter and that a very similar divisional was relied upon by Apple within the Statement of Grounds and Particulars.
I also note that at the hearing, the ground was pursued by Apple only in relation to the Class 9 and 42 claims of the Healthkit Application.
Section 44 of the Act provides:
44Identical etc. trade marks
(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.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(2)Subject to subsections (3) and (4), an application for the registration of a trade mark (applicant’s trade mark) in respect of services (applicant’s services) must be rejected if:
(a)it is substantially identical with, or deceptively similar to:
(i)a trade mark registered by another person in respect of similar services or closely related goods; or
(ii)a trade mark whose registration in respect of similar services or closely related goods 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 services is not earlier than the priority date for the registration of the other trade mark in respect of the similar services or closely related goods.
Note 1:For deceptively similar see section 10.
Note 2:For similar services see subsection 14(2).
Note 3:For priority date see section 12.
Note 4:The regulations may provide that an application must also be rejected if the trade mark is substantially identical with, or deceptively similar to, a protected international trade mark or a trade mark for which there is a request to extend international registration to Australia: see Part 17A.
(3)If the Registrar in either case is satisfied:
(a)that there has been honest concurrent use of the 2 trade marks; or
(b)that, because of other circumstances, it is proper to do so;
the Registrar may accept the application for the registration of the applicant’s trade mark subject to any conditions or limitations that the Registrar thinks fit to impose. If the applicant’s trade mark has been used only in a particular area, the limitations may include that the use of the trade mark is to be restricted to that particular area.
Note:For limitations see section 6.
(4)If the Registrar in either case is satisfied that the applicant, or the applicant and the predecessor in title of the applicant, have continuously used the applicant’s trade mark for a period:
(a)beginning before the priority date for the registration of the other trade mark in respect of:
(i)the similar goods or closely related services; or
(ii)the similar services or closely related goods; and
(b)ending on the priority date for the registration of the applicant’s trade mark;
the Registrar may not reject the application because of the existence of the other trade mark.
Note 1:An authorised use of the trade mark by a person is taken to be a use of the trade mark by the owner of the trade mark (see subsection 7(3)).
Note 2:For predecessor in title see section 6.
Note 3:For priority date see section 12.
The applications upon which Apple relies have a priority date earlier than that of the Healthkit Application. The trade marks under consideration are identical. It thus remains to be decided whether the goods within the Apple Specification are similar or closely related to the goods and services within the Healthkit Specification and whether the services within the specification of the Apple divisional are similar or closely related to the goods and services within the Healthkit Specification.
The specification of goods and services of the parties are to be considered at their broadest. In Woolworths[32] French J observed:
It is not in dispute on this appeal that in applying the test provided for by s 44(2) of the Act, consideration is not to be given to the actual use made by the owners of the trade mark cited against the applicant for registration. The test to be applied is that proposed by Evershed J in Re An Application by Smith Hayden & Co Ltd (1945) 63 RPC 97 at 101. That test may be paraphrased for the purposes of this appeal as follows. Assuming use by the proprietor of the cited trade marks in a normal and fair manner for any of the goods or services covered by the registrations of trade marks, is the Court satisfied that there is a reasonable likelihood of deception or confusion among a substantial number of persons if the applicant for registration also uses its mark normally and fairly in respect of services covered by the proposed registration. See also Berlei v Hestia Industries Ltd [1973] HCA 43; (1973) 129 CLR 353 per Mason J at 362.
[32] Op cit at [88].
Apple’s goods in 1637556 are broadly stated and include ‘computer software; database management software; computer software for accessing, browsing and searching online databases’. These claims must, as per Woolworths, above, be read at their broadest and necessarily include those goods within Healthkit’s Class 9 claim, ‘Computer software and software applications providing practice and patient management and administration services for medical practitioners; computer software and software applications to enable the transmission, sharing, organisation and management of medical and clinical information; computer software and software applications for accessing and searching online medical practitioner databases’. Those goods are thus the same goods as Apple’s ‘computer software; database management software; computer software for accessing, browsing and searching online databases’.
The ground under section 44 is thus established in relation to the Class 9 goods within the Healthkit Specification.
Similarly, as regards closely related goods and services, it has been the Registrar’s practice to regard ‘computer software’ and ‘SaaS’ as being closely related. In my considerations under the section 58 ground in the opposition to the Apple Application I found that Healthkit had not established that computer software and the Healthkit Services are ‘the same kind of thing’. However the term of art ‘closely related’ involves considerations more akin to those applied in matters which involve goods or services ‘of the same description’ than to considerations of what constitutes goods or services which are ‘the same kind of thing’ which amounts to a closer likeness. See the comments of Kenny J in Colorado Group Ltd v Strandbags Group Pty Ltd[33] on this issue:
In identifying whether or not goods or a class of goods are essentially the same as other goods or classes of goods, a decision-maker will have regard to a range of factors, depending on the goods in question. Physical and functional differences may be relevant. Other matters may be as well. There is no bright line that marks out the factors for a “same kind” inquiry from the factors for a “same description” inquiry, although these inquiries may differ in the answers they yield. Goods that are properly regarded as “essentially the same” may well cover a narrower field [than] goods “of the same description”.
[33] [2007] FCAFC 184; (2007) 164 FCR 506; (2007) 243 ALR 127; [2008] AIPC 92-272; (2007) 74 IPR 246 at [16].
In Re Aussat Pty Ltd[34] the Registrar’s delegate suggested some considerations which may be relevant in the assessment of whether goods and services are closely related:
[34] [1993] ATMO 55; 27 IPR 309; [1993] AIPC 39-440.
·are the services performed directly upon or by means of the goods? if so,
·are the goods and services generally regarded by the ordinary consumer as originating in, or being part of, the one industry or trade, or, a closely related trade or industry?
In consideration of the latter point some guide-lines might be suggested and I stress that these are not in any particular order of priority:
·are the goods and services of matching technical complexity?
·is the technical training of the people who make the goods or provide the services the same?
·do the people who make the goods or provide the services belong to the same unions or associations?
·are there personnel who are implicit in the provision of the service, or a necessary ancillary to the provision of it, who are viewed by the ordinary person as having the essential expertise in common to the provision of either the goods or services?
[…]
This list of criteria is not exhaustive, neither, I think, is it necessary that all considerations be satisfied, nor do I think that any single criterion is of necessity conclusive although it may be. However, taken as a general guide these criteria build up a picture of the total of the considerations involved in assessing what are closely related goods and services. In complex cases such as oppositions, the issue may only become clear on the provision of evidence that addresses factors such as those above.
In applying the above considerations to the question of whether Apple’s Class 9 goods are closely related to Healthkit’s Class 42 services, the plain answer is ‘yes’, at least as far as Healthkit’s computer software and data-base related services in Class 42.
I turn next to the question of whether the services in Apple’s Class 42 specification within the divisional (application 1815328) are similar to services within Healthkit’s Class 42 specification.
The expression ‘similar services’ is defined within section 14 of the Act:
14Definition of similar goods and similar services
[…]
(2)For the purposes of this Act, services are similar to other services:
(a)if they are the same as the other services; or
(b)if they are of the same description as that of the other services.
The expression ‘services of the same description’ was considered recently in Accor Australia & New Zealand Hospitality Pty Ltd v Liv Pty Ltd[35] by Greenwood, Besanko and Katzmann JJ. After considering the expression ‘goods of the same description’ and the discussions of it in SouthernCross Refrigerating Co v Toowoomba Foundry Pty Ltd[36] by Dixon CJ, McTiernan, Webb, Fullagar and Taylor JJ, and in Reckitt & Colman (Australia) Ltd v Boden[37] by Dixon J, their Honours observed:
[35] [2017] FCAFC 56 at [399].
[36] [1953] HCA 73; (1954) 91 CLR 592 at 606.
[37] [1945] HCA 12; (1945) 70 CLR 84 at 94.
As to whether particular impugned services might properly be understood as services of the same description as services for which a trade mark is registered, the features to be considered are likely to include these considerations:
(1) The inherent character of each of the services for which the trade mark is registered. That may emerge as a function of language but it is likely to be the subject of evidence: for example, what does “an hotelier” actually do? What precisely is involved in providing “property management services”?
(2) To whom are the services offered?
(3) How are they provided?
(4) How are they used?
(5) What is their purpose?
(6) Are they bundled together with other services?
(7) Are they differentiated by the functional level at which they are provided: wholesale or retail?
(8) Where do they originate?
(9) What is the method of their communication to the relevant target audience: is it predominantly by electronic means, domain names, websites, Twitter, Facebook or other means such as other trade brochures and journals?
(10) How closely contestable are the services in substance: are they in the same market or trade?
(11) How might consumers of the services perceive the services: see, for example, E & J Gallo Winery v Lion Nathan Australia Pty Ltd [2009] FCAFC 27; (2009) 175 FCR 386, per Moore, Edmonds and Gilmour JJ at [71][73].
Apple’s specification of services in Class 42 of the divisional is:
Health, fitness, exercise, and wellness monitoring and assessment services; providing information in the fields of health, fitness, exercise, and wellness; providing a website featuring information on health, fitness, exercise, and wellness.
Mr Lang, for Apple, submitted:
… the following class 42 services in the [Healthkit] Application are the same or of the same description as services in the Opponent’s Application 1815328:
(a) “creating indexes of online information”. If that information is or includes health information it will be a service that is the same or of the same description as “providing information in the field of health”;
(b) “creating indexes of online websites and information services”. If those websites and services relate to health then, again, the service will be the same or of the same description as “providing information in the field of health”.
(c) “providing information, including online, about scientific … services and research …”. If the scientific services and research relate to health, then the services are the same or of the same description as “providing information in the field of health”;
(d) “Hosting of software as a service (SaaS), all in relation to providing practice and patient management and administration services for medical practitioners, patients and health consumers, for enabling the transmission, sharing, organisation and management of medical and clinical information and medical and clinical data, and for accessing and searching online medical practitioner databases, and for the provision of clinical tools to track and manage patient treatment”. These services are the same or of the same description as either health monitoring and assessment services, or the provision of information in the field of health;
(e) “Online provision of web-based applications”. To the extent that these applications relate to health information or monitoring health they will be services that are the same or of the same description.
(f) “Software as a service (SaaS), all in relation to providing practice and patient management and administration services for medical practitioners, patients and health consumers, for enabling the transmission, sharing, organisation and management of medical and clinical information and medical and clinical data, and for accessing and searching online medical practitioner databases, and for the provision of clinical tools to track and manage patient treatment”. Here the overlap is the same as that described at (d) above.
With the exception of those at (d), (e) and (f), above, I agree with Mr Lang’s submissions. In relation to the potential similarities at (d), (e) and (f) I consider that these appear to be more of the order of those referred to in MID Sydney Pty Ltd v Australian Tourism Co Ltd[38] by Burchett, Sackville and Lehane JJ where they observed that the ‘services are performed which are incidental to the conduct of the […] business.’ The online provision of web-based applications is in essence SaaS and, even if the software accessed by a client was used for monitoring health, it is not obvious that the providers of the SaaS is performing the service of monitoring health any more than a hire service that provides chainsaws is providing a tree-lopping service or a trailer hire company is providing a removal service.
[38] [1998] FCA 1616; (1998) 90 FCR 236; (1998) 42 IPR 561; [1999] AIPC 39-051.
It follows, however, that Apple has established its opposition under sections 44(1) and 44(2) of the Act in relation to the Class 9 and Class 42 specifications of the Healthkit Application.
Subsections 44(3) and 44(4)
It necessarily follows that as Healthkit has not established use of the Trade Mark before the relevant date that it cannot rely on it to enliven the provisions of subsection 44(3) or 44(4). The use of a trade mark by Healthkit before the priority date of the Apple application was of the Logo Trade Mark and, in my consideration, this cannot be accepted as being use of the Trade Mark, as foreshadowed at paragraphs [11]-[14], above. There are, in my consideration, no other circumstances which would make it reasonable to accept the Healthkit Application under the provisions of paragraph 44(3)(b) of the Act.
Section 58
The considerations involved in assessing this ground are discussed at paragraph [45], above.
Apple’s evidence establishes that it had use of the Trade Mark before the priority date of the Healthkit Application in relation to Development Software for health and fitness apps (‘Apple’s Goods’). Apple’s Goods are, as previously discussed, Development Software that consists of a library of ‘building blocks’ from which programmes can be constructed.
However, these goods are not ‘the same kind of thing’ as neither the Healthkit goods in Class 9 nor its services in Class 42 (which involve finished products) are of like kind to Apple’s goods which are Development Software – being building blocks or a library.
Decisions and Disposition
Section 55(1) of the Act relevantly provides:
55Decision
(1)Unless subsection (3) applies to the proceedings, the Registrar must, at the end, decide:
(a)to refuse to register the trade mark; or
(b)to register the trade mark (with or without conditions or limitations) in respect of the goods and/or services then specified in the application;
having regard to the extent (if any) to which any ground on which the application was opposed has been established.
Note:For limitations see section 6.
1626348 in the name of Healthkit
Apple has established its opposition in relation to the goods in Class 9 and services in Class 42 and it is accordingly appropriate to refuse to register 1626348.
In line with recently adopted office practice, I have allowed Healthkit the opportunity to delete the Class 9 and Class 42 claims from its specification; however, Healthkit has declined to do so.
Accordingly, I refuse to register application 1626348.
1637556 in the name of Apple
Healthkit has not established a ground of opposition to the registration of 1637556.
The trade mark application may then 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 and the disposition of this application should be in accordance with the Court’s order or direction.
Costs
Both parties requested their costs in these matters. As Apple has been the successful party, I award costs in both matters against Healthkit at the official scale set out in Schedule 8 to the Trade Mark Regulations 1995.
Iain Campbell Thompson
Hearing Officer
Trade Marks Hearings
11 September 2017
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