Healthkit Pty Ltd v Apple Inc

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:…