Newton Pty Ltd v Apple Computer Inc

This matter concerns an opposition by Newton Pty Ltd to the registration of a trade mark application filed by Apple Computer Inc. Apple sought to register a trade mark comprising the words "Newton Compatible" and a lightbulb logo for computer equipment and software. Newton Pty Ltd opposed this application on grounds including sections 44, 41, and 43 of the *Trade Marks Act 1995*. The opposition was heard by a delegate of the Registrar of Trade Marks.

The primary legal issue before the delegate was whether Apple's proposed trade mark was substantially identical with or deceptively similar to Newton Pty Ltd's existing registered trade mark, which also prominently featured the word "Newton". This assessment was to be conducted in accordance with the principles of deceptive similarity as established in Australian trade mark law, considering the likely impression on ordinary consumers and the context of the goods. The delegate also considered grounds of opposition relating to the trade mark's ability to distinguish the applicant's goods.

The delegate reasoned that while both trade marks shared the prominent word "Newton", they were not substantially identical. In assessing deceptive similarity, the delegate applied the established test of comparing the impression left on the mind of a potential customer based on recollection, rather than a side-by-side comparison. The delegate found that the addition of the word "Compatible" in Apple's mark, combined with its common usage in the computer industry to denote interoperability, significantly altered the overall impression. The delegate concluded that the mark "Newton Compatible" was more likely to be understood as descriptive of the goods' function or purpose rather than indicating trade origin. Furthermore, the visual distinctiveness of Apple's lightbulb logo and overall get-up was considered to further differentiate it from Newton Pty Ltd's mark.

Ultimately, the delegate found that the trade marks were not deceptively similar for the purposes of section 44 of the *Trade Marks Act 1995*. Consequently, the ground of opposition under section 44 was not made out. The delegate also noted that the grounds under sections 41 and 43 were not adequately addressed by the evidence or submissions. Accordingly, the opposition was dismissed, and the application for registration was accepted.