Newton Pty Ltd v Apple Computer Inc

[2000] ATMO 55

TRADE MARKS ACT 1995

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

Re:Opposition by NEWTON PTY LTD to registration of trade mark application 630651(9) - Newton Compatible  and Lightbulb LOGO - filed in the name of APPLE COMPUTER INC.

Background

Application 630651 was filed in the name of Apple Computer Inc ("Apple") on 26 May 1994. The applicant, an American corporation, sought registration of  the trade mark reproduced below:

This trade mark was proposed to be registered in respect of Computer equipment including computer peripheral equipment included in class 9 for all the aforesaid goods; computer software, magnetic and digital disks and tapes and CDROM.

When the application was examined, registration 551979 in the name of Newton Pty Ltd, an Australian company, was cited as an obstacle to registration in terms of section 44 of the Trade Marks Act 1995. The trade mark in question is reproduced below:

 

To secure acceptance, Apple, through its Australian subsidiary, Apple Computer Pty Ltd, instigated an action for removal of registration 551979. This resulted in the partial removal of that registration, which remains on the Register in respect of Commercial and industrial control equipment; preamplifiers/mixers.

In view of the restriction, the citation of  551979 was then withdrawn and application 630651 was advertised accepted for registration on 4 June 1998 for the specification of goods as originally filed.

On 27 August 1998, Newton Pty Ltd filed a notice of opposition.  It filed no evidence in support of its opposition. Evidence in answer was served on 19 February 1999.  On 19 May 1999, the opponent served evidence in reply to the evidence in answer.  Neither party requested a hearing despite having had the opportunity to do so.  However, by letter dated 4 August 1999, the applicant made written submissions. 

As delegate of the Registrar of Trade Marks, I have been assigned to decide the opposition on the basis of the material on the file.

The evidence

As no evidence in support was served, I shall first summarise Apple's evidence, and then do the same for the evidence in reply from the opponent.

The evidence in answer

This consists,  almost in its entirety, of a copy of evidence previously filed in connection with the removal application to which I have already referred.  There is a leading statutory declaration by William Peter Knight, ("the Knight declaration"), and two other statutory declarations, by Paul D. Carmichael ("the Carmichael declaration") and John William Harrington ("the Harrington declaration") respectively.

I note, for the record, that I found no examples of actual use of the trade mark in question in any of the applicant's evidence.

the Knight declaration (8 February 1999)

Mr Knight states he is a partner of Clayton Utz, Solicitors, and acts for Apple Computer Inc.  He sets out the history of the application and of the removal action in respect of registration 551979.  Copies of two of the three statutory declarations filed in support of the removal applications are annexed to his declaration.

the Carmichael declaration (29 September 1997)

Mr Carmichael is Director of Patents and Trademarks, and Assistant Secretary, of Apple Computer, Inc. He annexes details of "Newton" trade mark applications and registrations worldwide.  He states that the Newton technology was launched in the United States on May 29, 1992 and provides a contemporary report of this from Newsweek magazine, 1 June 1992. The product, which had then just been launched, is described in that article as follows:

"..a handheld electronic tablet on which you write with a pen, storing telephone numbers, addresses, notes and memos.  The futuristic-looking little device even sends faxes and dials the phone.  Newton....is first in a line of products Apple calls personal digital assistants, or PDAs."

the Harrington declaration (1 October 1997)

Mr Harrington describes himself as Product Marketing Manager Macintosh, Apple Australia, which is a subsidiary of Apple Computer Inc, the applicant. After setting out his technical credentials and history with the company, he states that Apple Australia first offered a PDA, which it called the "'Newton' MessagePad", for sale in Australia in late 1993. He notes that the product was eagerly awaited in the marketplace, because of interest generated by the publicity surrounding its launch overseas.  He annexes sales figures 1995 - 1997 for "the 'Newton' products" and describes these products, as first offered for sale, as follows:

The "Newton" MessagePad (a 640K version and a 1Mb version); power adaptors and power cables; rechargeable batteries; battery rechargers; additional memory/storage cards; carrying cases; cables, connectors and software for connecting the "Newton" to Macintosh or PC, and to printers; and fax/modems and user manuals for these ....The "Newton" MessagePad included a built-in calculator, basic wordprocessing and list software and game software.  Since that date the product range also includes software for use with the "Newton" products.

He states that the subject trade mark is used on these goods.

The company adopted a "vertical marketing strategy", which meant encouraging local Australian companies to write software for the goods or to create uses for them within their own companies. Other forms of promotion were also used and examples of various advertisements are annexed.  Also annexed to the declaration are copies of information material from Apple's web-site and a list of re-sellers.

Mr Harrington next annexes a copy of a declaration made on 4 April 1997, by Elmo Jacob.  Mr Jacob, a Director of Newton Pty Limited, provided copies of brochures on the opponent's products. The brochures cover preamplifiers/mixers, press splitters/public address systems, audio control systems and software, and input/output cards for commercial and industrial control systems (the last having been developed as a joint venture with the Civil Aviation Authority Australia).  Mr Harrington, in his declaration, proceeds to set out the technical and customer distinctions between Apple's "Newton" product and the goods produced by the opponent. Finally he declares that he is unaware of any instances of confusion and does not believe confusion is likely.

The evidence in reply

This consists of a statutory declaration, dated 18 May 1999, by Peter Geoffrey McNeil, Engineering Manager at Newton Pty Ltd ("the McNeil declaration").  This declaration disputes Mr Harrington's claims that the areas of technology are different, and that the customer bases are different.  It also gives additional product information about the goods of the respective parties. The trade mark, in the form recorded under the opponent's existing registration, 551979, is shown in use in the annexures.

The submissions

By letter dated 4 August 1999, the applicant made submissions in the matter through its lawyers, Clayton Utz.  These submissions support Apple's case, outline the examination and opposition history of the application, criticise the opponent's evidence as failing to support the grounds of opposition and argue that all grounds should be dismissed.

Grounds of Opposition

The notice of opposition nominates grounds under sections 44, 41 and 43 of the Trade Marks Act 1995. I will deal with them in this order.

Discussion

Section 44

The opponent nominates both sub-sections (1) and (2) of section 44 as a ground of opposition. However, as sub-section 44.(2) applies only to applications covering services, and this is an application for goods, it is not relevant to this opposition. The relevant sub-section is (1). So far as that applies here, it reads as follows:

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

(a) it 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;

……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.

Priority date

The opponent's trade mark, which has been registered since 1991, has a priority date earlier than Apple's trade mark, which was not filed until 1994. Registration 551979 is therefore a trade mark on which a ground of opposition under s44.(1) may be based.

Comparison of the trade marks

For convenient comparison, I reproduce the two trade marks again at this point:

Before comparing them in detail, I should deal briefly with a puzzling part of the evidence. The McNeil declaration, at paragraph 15, states "The trademarks are deceptively similar in that both use the same font and both contain a small icon to the left of the word 'Newton'."  Opposed trade mark 630651, however, does not contain any small icon to the left of the word Newton.  There is a quite sizeable icon beneath it, which lies between the word Newton and the word Compatible.  The words and icon are arranged within a disc.  I do not know what particular version of the applicant's trade mark Mr McNeil may have been looking at, but I discount this submission as it does not relate to the trade mark at issue.

Turning now to the matter of comparison, the trade marks are to be compared for the purpose of establishing whether they are substantially identical or deceptively similar.  However, I take it as obvious that the two trade marks are not substantially identical, despite sharing as a prominent feature the common surname Newton. 

Deceptive similarity

This term is defined in Section 10 of the Trade Marks Act 1995:

Definition of deceptively similar

10. For the purposes of this Act, a trade mark is taken to be deceptively similar to another trade mark if it so nearly resembles that other trade mark that it is likely to deceive or cause confusion.

The approach to be taken in assessing this is also set out by Windeyer J in Shell Co. (Aust) Ltd v Esso Standard Oil (Aust) Ltd[1]:

[1] (1961) 109 CLR 407 at 414-415

On the question of deceptive similarity, a different comparison must be made from that which is necessary when substantial identity is in question.  The marks are not now to be looked at side by side.  The issue is not abstract similarity, but deceptive similarity.  Therefore the comparison is the familar one of trade mark law.  It is between, on the one hand, the impression based on recollection of the plaintiff's mark that people of ordinary intelligence and memory would have; and, on the other hand, the impressions that such persons would get from the defendant's television advertisements.

More detail of the nature of this enquiry is provided by Dixon and McTiernan JJ[2]:

[2] Australian Woollen Mills Ltd v F.S. Walton & Co Ltd (1937) 58 CLR 641

In deciding this question, the marks ought not, of course, to be compared side by side.  An attempt should be made to estimate the effect or impression produced on the mind of potential customers by the mark or device for which the protection of an injunction is sought.  The impression or recollection which is carried away and retained is necessarily the basis of any mistaken belief that the challenged mark or device is the same.  The effect of spoken description must be considered.  If a mark is in fact or from its nature likely to be the source of some name or verbal description by which buyers will express their desire to have the goods, their similarities both of sound and of meaning may play an important part.  The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.  Evidence of actual cases of deception, if forthcoming, is of great weight.

What is the impression based on recollection of the opponent's trade mark that persons of ordinary intelligence and memory would have?  What, on the other hand, is the impression that such persons would get from Apple's trade mark?

The name "Newton" is the main identifying feature of the opponent's registered trade mark.  I am in no doubt that this  trade mark will be remembered as the "Newton" trade mark.

The word "Newton" is also prominently featured in Apple's trade mark.  If there were no other word in the trade mark, I would have no difficulty in finding that the two trade marks were deceptively similar.  However, there is a second prominent word, "compatible", in the Apple's trade mark.  It seems to me that the two words make up a meaningful whole. It follows that it is the effect of the combination of these two words which determines the impression the trade mark will leave, rather than just the signification of each of the component parts.

According to the Macquarie Dictionary, the word compatible is used as a noun, to mean a computer peripheral "able to work in conjunction with another specified device."   More generally, and as an adjective, the word means "Capable of orderly, efficient integration with other elements in a system".  Both of these meanings are in common usage, especially for goods of the kind made by the two parties. 

It is also common usage, so far as I am aware, for the word to be used in the manner shown in the subject trade mark. For example, thinking in terms of two very well-known trade marks, it is as common to hear and see the expressions "IBM compatible" or "Windows compatible", as "compatible with IBM devices" or "compatible with Windows".  It is a neat, succinct way of conveying that information, and has a modern, computer-jargon feel.

Both the applicant and the opponent are in the field of electronics and computers. In this  field, so far as I am aware, different manufacturers not infrequently make products which  are compatible with those of other entities. Compatibility with a product, in today's market conditions, in this line of business, does not necessarily mean common ownership.  I believe this to be common knowledge amongst the persons who would ordinarily purchase such goods.

Given this current usage, are the trade marks deceptively similar?  What is the likelihood that there will be deception or confusion in the market place between the two trade marks?

Explaining how to weigh the effect of a trade mark on likely purchasers, Richardson J[3] said:

[3] Pioneer Hi-Bred Corn Co. v Hyline Chicks Pty Ltd [1979] R.P.C. 410 at 423 (C.A. of N.Z.)

"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: New Zealand Breweries Ltd v. Heineken's Bier Browerij Maatschappij N.V. [1964] N.Z.R.L. 115 at 141.  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.

Considered purely as a verbal description, "Newton Compatible" would not convey to the ordinary customer the impression that there is any connection in the course of trade between the maker of the "compatible" item, and the maker of the original "Newton" product(s).  Deception is, I think, quite unlikely to occur.  It is possible that a person unfamiliar with computer jargon, and knowing the word "compatible" only from other contexts, might be confused as to whether the word "Newton" denoted trade origin or indicated a certain guaranteed quality in the goods.  The words could then be construed to mean that "the Newton people" are now producing a line of goods compatible with their existing products and promoting them as such.  However, I think the possibility of this interpretation does not amount to a likelihood of confusion.

On balance, it seems to me that the two words "Newton Compatible" are more likely to be understood as conveying information about a characteristic of the goods or as indicating their intended use or purpose, rather than as denoting or implying origin. In a limited sense, they could be said to function as descriptive words. I am therefore inclined to think that the meaning of the word "compatible", in the context of today's market conditions, will lead the ordinary customer to ascribe the accompanying word, "Newton", a lesser and different significance in the trade mark than if it appeared by itself.

When the applicant's trade mark is inspected visually, I think the possibility of deception is fairly remote. The presence in the applicant's trade mark of the light bulb device (which I note is the subject, solus, of registration 598512) and its overall shape and get-up is sufficient, I believe, to distinguish it from the opponent's trade mark.

Aural similarity however, is also to be taken into account. How will Apple's trade mark be referred to?  It is not very likely that it would be recalled or referred to as "the light-bulb logo", even though that device is also very prominent in the trade mark. It is possible that it could be referred to as a "Newton compatible brand",  or  as "one of those "Newton" marks", because of the presence of that name in the logo.  However, I do not think that this possibility is sufficient for a finding of deceptive similarity[4].  I think that the trade marks, although possessing a prominent common element, are not really deceptively similar. As observed in Australian Woollen Mills[5],  

[4] Registrar of  Trade Marks v Woolworths Limited [1999] FCA 1020 Trade Marks (1999) 93 FCR 365

[5] Loc. Cit. supra, at 658

The usual manner in which ordinary people behave must be the test of what confusion or deception may be expected.  Potential buyers of goods are not to be credited with any high perception or habitual caution.  On the other hand, exceptional carelessness or stupidity may be disregarded.  The course of business and the way in which the particular class of goods are sold gives, it may be said, the setting, and the habits and observation of men considered in the mass affords the standard.

I am thus reluctant to conclude that it is likely to be confused with the very different trade mark of the opponent, in which the word "Newton" does indeed carry the weight of a claim to origin. The similarities between the trade marks which may occur in verbal description are admittedly greater, but  I am not convinced they are sufficiently great to be likely to lead to deception or confusion.

I also note that no instances of actual confusion have been cited by either party.

To summarise, I find that the presence of the name "Newton" in both  trade marks does not give rise of itself to any real likelihood of deception or confusion as to the ownership of the trade marks or the origin of the goods.  I believe that the main impression, derived from the words themselves, is that the applicant's trade mark is a logo brand used on goods which are compatible with certain products called "Newton", or made by an entity called "Newton", and not that the goods come from that entity. 

For this reason, I find that the trade marks are not deceptively similar in terms of Section 10 of the Trade Marks Act. For the application of s44, there must either be substantial identity or deceptive similarity between the apparently conflicting trade marks. As there is neither, s44 cannot impede the registration of the present application. It follows that I do not need to canvass the question of whether the goods encompassed by the specifications of each trade mark are similar goods.

The ground of opposition under s 44 is not made out.

Section 41

So far as it is relevant, Section 41 of the Trade Marks Act 1995 provides:

Trade mark not distinguishing Applicant's goods or services

….

(2) An application for the registration of a trade mark must be rejected if the trade mark is not capable of distinguishing the Applicant's goods or services in respect of which the trade mark is sought to be registered (designated goods or services) from the goods or services of other persons.

Neither the evidence nor the submissions address this ground.

S41 concerns the inherent nature of the applicant's trade mark. The term "trade mark" is defined in the Trade Marks Act 1995, as follows:

17. 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.

If a trade mark which is proposed to be registered has sufficient inherent adaptation to be capable of distinguishing the applicant's goods or services from the similar goods and services of other traders, no ground for rejection will be raised in the course of examination.

A trade mark may be capable of distinguishing even though made up of components which have little or no inherent adaptation to distinguish.  I think it would be useful, in this opposition context, to discuss the treatment of non-distinctive elements under the previous legislation.

Under the Trade Marks Act 1955, the Registrar frequently required the imposition of a disclaimer renouncing exclusive rights to non-distinctive elements of a trade mark.  I note that  the opponent's registered trade mark carries the following endorsement:

Registration of this trade mark shall give no right to the exclusive use of the word NEWTON.

Such endorsements are no longer required under the provisions of the Trade Marks Act 1995.  However, the fact that this endorsement was imposed on the prior registration is perhaps worth noting in the context of the present application.  "Newton" is of course a common surname, occurring 5441 times in the Search for Australian Surnames, which is based on the Australian Electoral Roll.  It is to be expected, because of this frequent occurrence, that other traders who share this surname may also require the use of the same name in the ordinary course of their business in connection with their similar goods or services.  The name also happens to have a particular resonance in relation to scientific endeavour, because of its connection with the great Sir Isaac Newton, author of the seminal 17^th century treatise entitled Philosophiae Naturalis Principia Mathematica.  This scientific reference adds to the likelihood of it being chosen as suitable for use as a trade mark in relation to sophisticated technologies.

The significance and frequency of the name, however, is not the principal enquiry.  It is the trade mark as a whole which is to be considered in deciding whether the trade mark is capable of distinguishing[6].

[6] Diamond T. Motor Co's Appn (1921) 38 RPC 373 (Ch.D.)

Although I have concluded that the words "Newton compatible" contained in the trade mark may be said to describe, in a limited sense, a characteristic of the goods, I concur with the judgement of the examiner that the trade mark, as a whole, is inherently capable of distinguishing the goods of the applicant from those of other persons. It consists of a light bulb device and words which are arranged around that device so as to make up a striking logo. It is prima facie capable of distinguishing.

The s 41 ground of opposition is not made out.

Section 43

Section 43 of the Trade Marks Act 1995 provides:

Trade mark likely to deceive or cause confusion

43. An application for the registration of a trade mark in respect of particular goods or services must be rejected if, because of some connotation that the trade mark or a sign contained in the trade mark has, the use of the trade mark in relation to those goods or services would be likely to deceive or cause confusion.

The evidence and submissions do not specifically address this ground, except in so far as the opponent states that deception or confusion is likely, whereas the applicant states that it is not.

In Registrar of Trade Marks v Woolworths Ltd[7] Justice Branson noted the differences between s 43 and s 60, despite their common origin in s 28(a) of the 1955 Act, as follows:

[7] [1999] FCA 1020 (29 July 1999)

79 The broad provision contained in s 28(a) of the 1955 Act is now reflected in two separate sections of the Act - ss 43 and 60. Section 43, which is a ground for the rejection of an application for registration of a trade mark, looks to the inherent qualities of the trade mark, of which registration is sought for the purpose of identifying whether the use of the trade mark, would be likely to deceive or cause confusion. Section 60, which is a ground of opposition to registration, is concerned with whether the use of the trade mark, of which registration is sought would be likely to deceive or cause confusion by reason of the reputation in Australia of another trade mark.

80 The fact that s 43 is found in Part 4 Division 2 of the Act, whilst s 60 is found in Part 5 Division 2, reflects, in my view, an appreciation of the practical reality that before the acceptance for registration and advertising of an application for registration of a trade mark, the information available to the Registrar touching on issues of likely deception and confusion will be limited.

It should be noted that, unlike s 60, s 43 does not depend upon any comparison between competing trade marks. It concerns only the inherent nature of the applicant's trade mark.

The Trade Marks  Draft Manual of Practice and Procedure [8] states that

[8] Part 29, paragraph 1.4

Considerations under [s43] concentrate on the matter within the trade mark that could cause deception and confusion in the mind of the relevant buying public.  For example, deception or confusion could arise in regard to:

·Character of the goods and/or services including their composition, nature or other properties

·Quality or quantity of the goods and/or services

·Geographical origin of the goods and/or services

·Intended use or purpose of the goods and/or services

·The endorsement or licence of a product or service by a person or organisation.

I have already concluded that the present application contains matter which, in a limited sense, describes a characteristic, or indicates the intended use or purpose, of the goods.  I must now consider whether this inherent matter is likely to lead to deception or confusion.

Connotation

As the delegate of the Registrar has previously observed[9]:

[9] Down to Earth (Victoria) Co-operative Society  Ltd v Schmidt (1998) 41 IPR 632

"Connotation" is a new term in trade mark legislation and as such has not yet been interpreted by the courts.  The following are two dictionary definitions which define the ordinary meaning:

Macquarie Dictionary

1. the act or fact of connoting. 2. That which is connoted; secondary implied or associated meanings (as distinguished from denotation): For example the word "bum" has connotations of vulgarity.

Oxford English Dictionary

1. The signifying in addition; inclusion of something in the meaning of a word beside what it primarily denotes; implication.

Therefore it can be said that the word connotation refers to that which is implied in a trade mark - in addition to its essential or primary meaning.  A connotation can result from the trade mark as a whole, or can result from a sign contained within the trade mark.  The prominence and context of the potentially deceptive or confusing element in the trade mark is important in deciding whether the trade mark is likely to deceive or cause confusion.

The potentially deceptive or confusing element in this trade mark is the word "Compatible".  It is a prominent element in the trade mark.  Its implication in the context of the trade mark is that the products on which the trade mark is used are "able to work with another specified device".  That other device (or devices) is (are) specified in this case as "Newton" device(s).  In total, this seems to me to be the connotation of the opposed trade mark.

To put it another way, the essential element of the opposed trade mark is that of the light bulb, a logo which functions as a trade mark denoting the goods of the applicant.  This element is what distinguishes the goods from those of others. The connotation of a prominent sign contained within the trade mark, however, is that the particular goods to which the trade mark is applied will work with goods made by an entity called "Newton", with goods bearing a "Newton" brand, or with goods which are otherwise qualified as being, in one way or another, "Newton" products. 

Use of the trade mark in relation to the nominated goods

My discussion began with the point that section 43 does not involve a comparison between trade marks. However, it still requires an enquiry as to the scope of the goods and the relevant market to which those goods are to be projected.

The test here does not relate only to the goods on which the applicant has demonstrated, in the evidence, it has actually used its trade mark. As was the case in considerations under section 28(a) of the Trade Marks Act 1955, the test is to be applied to the entire range of goods for which registration is sought. In the words of Kitto J[10]:

[10] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 at 594-5

The onus must be discharged by the Applicant in respect of which registration is desired, and not only in respect of those goods on which he is proposing to use the mark immediately.  And the onus is not discharged by proof only that a particular method of user will not give rise to confusion.  The test is, what can the Applicant do if he obtains registration?

The subject trade mark encompasses a wide range of computer goods together with peripheral and ancillary equipment. It is broadly stated. I reproduce the specification here to demonstrate this:

Computer equipment including computer peripheral equipment and parts, fittings and ancillary equipment included in class 9 for all the aforesaid goods; computer software, magnetic and digital disks and tapes and CDROM

It appears to me that this specification would give Apple rights to use its trade mark on a much wider range of goods than those associated with its hand-held personal digital assistants, and the peripheral and ancillary equipment appropriate thereto.  It would be able to use it in connection with any computer equipment and software, including computer software used in commercial and industrial control systems.

Likelihood of deception and confusion

The test for deception or confusion, which was originally formulated before the introduction of service marks, has recently been dealt with in the judgement of French J. in the Metro case[11].   In considering the phrase likely to deceive or cause confusion, his Honour at paragraph 43 says:

[11] Registrar of Trade Marks v Woolworths, supra

For there to be a deceptive similarity between a service mark and a mark in respect of closely related goods the degree of resemblance must be such that the service mark is "likely to deceive or cause confusion". The use of the word “likely” in this context does not import a requirement that it be more probable than not that the mark has that effect.  The probability of deception or confusion must be finite and non-trivial. There must be a “real tangible danger of its occurring” - Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 529 at 594-5 per Kitto J.

Irrespective of whether the trade marks in question are for goods or for services, then, there must be a real tangible danger of deception or confusion.

Where s 43 is concerned, some trade marks present an obvious and real tangible danger of deception or confusion. These are dealt with routinely at examination. In the case of a trade mark like this, it is much less clear that the trade mark is inherently deceptive, and impossible to assess the degree of risk of deception, without the assistance of additional information.

In a recent and as yet unpublished opposition decision[12], the Registrar's delegate was shown that the demonstrated critical and popular success of a film was sufficient to create a likelihood of deception or confusion in terms of s43. She stated her impression of the evidence as follows:

[12] Twentieth Century Fox Film Corporation v Michael F. Durkan (appn 740114 - BRAVEHEART THE MUSICAL) - 19 Jan 2000

... the overall connotation likely to be imparted to a substantial portion of the Australian public by the trade mark braveheart the musical is that the makers of the film braveheart are now presenting (by way of a musical production)  or promoting (by way of T-shirts or caps) a musical version of the story previously unfolded in the film.

If this present opposition is to succeed, the opponent needs somehow to demonstrate who its customers were, and how many of them there were, as at the priority date of the opposed application.  For example, it is open to any opponent to ask its clients to provide substantiating information as to the likely effect of the use of the opposed trade mark on them. 

I have studied Mr McNeil's declaration, but cannot find that the opponent has established, as a matter of fact substantiated by evidence, that at the date of application there existed a likelihood of deception or confusion in terms of s 43 if the subject application were to proceed to registration. While the material before me shows that Newton is the company name of the opponent in this matter, and also shows that the opponent is in the same line of business, when notional use is considered, it shows little more. The opponent has not demonstrated the existence of a significant number of people who might have been misled by the term "Newton Compatible" in the opposed trade mark into thinking that Apple's goods were "able to work in conjunction with" the opponent's own products. There is information about some products and customers, but it is not clear what products the opponent had sold, and to whom, prior to the application date of 26 May 1994. There is no supporting documentation from any clients. I have not been shown that the likelihood of deception or confusion is "finite and non-trivial".

Thus, although I accept that, because of the connotation of a sign contained in the trade mark, use of the applicant's trade mark on the full range of goods for which it has been accepted could be likely to lead to deception and confusion, the opponent has failed to establish that it would be reasonably likely to do so.

The s 43 ground of opposition is not established.

Decision

I find the opposition has failed and that the application should be registered.  Accordingly, I direct that the application may proceed to registration after 30 days 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.

Arminel Ryan
Senior Examiner

7 June 2000