Re: Opposition by Apple Inc. to extension of protection to Australia of International Registration Designating Australia 1280843 (9) Tick Different (Fancy) (Australian Trade Mark Application No. 1743921) filed in..
[2019] ATMO 98
•25 June 2019
TRADE MARKS ACT 1995
DECISION OF A DELEGATE OF THE REGISTRAR OF TRADE MARKS WITH REASONS
Re:Opposition by Apple Inc. to extension of protection to Australia of International Registration Designating Australia 1280843 (9) – TICK DIFFERENT (Fancy) (Australian Trade Mark Application No. 1743921) - filed in the name of Swatch AG (Swatch SA) (Swatch Ltd.)
Delegate: Nicholas Smith Representation: Opponent: Fiona McNeil of Counsel instructed by Brett Doyle of Clayton Utz
Holder: Stephen Rebikoff of Counsel instructed by Paul Fong of WatermarkDecision: 2019 ATMO 98
Trade Marks Act 1995 (Cth) - Regulation 17A.33 opposition: ss 42(b), 44, 59, 60 and 62A considered – none established – protection may be extended to AustraliaBackground
This is an opposition brought by Apple Inc. (‘Opponent’) pursuant to regulation 17A.33 of the Trade Marks Regulations 1995 (Cth) (‘Regulations’) to the extension of protection in Australia for the International Registration Designating Australia (‘IRDA’) details of which appear below in the name of Swatch AG (Swatch SA) (Swatch Ltd.) (‘Holder’):
Application Number:
1743921
IR Number
1280843
Priority Date:
16 July 2015 (Convention)
Filing Date
2 November 2015
Goods:
Class 9: Apparatus for recording, transmission and reproduction of sound or images; electronic payment processing apparatus, apparatus for processing cashless payment transactions; magnetic recording media, sound recording disks; compact disks, DVDs and other digital recording media; apparatus enabling the playing of compressed sound files (MP3); calculating machines and data processing equipment, software; game software for mobile telephones, for computers and for digital personal stereos; electronic game software for mobile telephones, for computers and for digital personal stereos; computers, portable computers, handheld computers, mobile computers, personal computers, wrist computers, electronic tablets and mobile and computer devices, digital personal stereos, mobile telephones and new-generation mobile telephones incorporating greater functionality (smartphones); telecommunication apparatus and instruments; apparatus for recording, transmission, reproduction of sound or images, particularly mobile telephones and new-generation mobile telephones incorporating greater functionality (smartphones); handheld electronic apparatus for accessing the Internet and sending, receiving, recording and storing of short messages, electronic messages, telephone calls, faxes, video-conferences, images, sound, music, text and other digital data; handheld electronic apparatus for wireless receiving, storing and transmitting of data or messages; handheld electronic apparatus for monitoring and organizing personal information; handheld electronic apparatus for global positioning [GPS] and displaying maps and transport information; handheld electronic devices for detecting, monitoring, storing, surveillance and transmitting data relating to the user activity, namely position, itinerary, distance traveled, heart rate; covers for computers, portable and mobile telephones; optical apparatus and instruments, particularly spectacles, sunglasses, magnifying glasses; cases for spectacles, sunglasses and magnifying glasses; batteries for electronic apparatus and computers, batteries for timepieces and chronometric instruments (‘Holder’s Goods’)
Trade Mark:
(‘Trade Mark’)
Following the advertisement on 4 February 2016 in the Australian Official Journal of Trade Marks of IP Australia’s intention to extend protection to Australia for the IRDA, the Opponent filed a Notice of Intention to Oppose on 4 April 2016. The Opponent then filed a Statement of Grounds and Particulars (‘SGP’) on 4 May 2016. The SGP raised grounds of opposition under ss 42(b), 44, 59, 60 and 62A of the Trade Marks Act 1995 (Cth) (‘Act’). The Holder filed a Notice of Intention to Defend on 17 May 2016.
Evidence and Submissions
The Opponent filed Evidence in Support of its opposition (‘EIS’) on 22 August 2016. This evidence consists of a declaration made on 19 August 2016 by Thomas R. La Perle, director in the legal department of the Opponent, with Exhibits TLP-1 to TLP-24 (‘La Perle 1’). Due to an error in uploading Exhibit TLP-23, Exhibit TLP-23 was not filed until 24 August 2016 and the Registrar granted a 1 day extension of time in respect of Exhibit TLP-23.
The Holder filed Evidence in Answer (‘EIA’) on 12 January 2017. This evidence consists of a declaration made on 10 January 2017 by Jeannine Aebi, CFO and Vice-President of the Holder, with Annexures 1 to 16 (‘Aebi Declaration’).
The Opponent filed Evidence in Reply (‘EIR’) on 20 March 2017 consisting of a declaration made on 16 March 2017 by Thomas R. La Perle with Annexures TLP-25 to TLP 26 (‘La Perle 2’).
Once the time allowed for filing evidence had ended the parties were given an opportunity to request a hearing or to file written submissions. On 12 April 2017 the Opponent requested an oral hearing. The Holder did the same on 9 August 2018. Following the issuance and expiry of a cooling-off period the matter was set down for a hearing in Canberra on 7 May 2019. In line with usual practice, a letter was sent to the parties on 26 February 2019 which contained a schedule for the provision of written summaries of submissions to be filed prior to the hearing. The Opponent filed written submissions on 23 April 2019 (‘Opponent’s Submissions’). The Holder filed written submissions on 30 April 2019 (‘Holder’s Submissions’).
On the day of the hearing the Opponent provided by e-mail two additional documents, being photos of parts of the packaging of the iMac personal computer that bore the words ‘Think Different’. This material had already been exhibited to La Perle 1 but it was difficult to properly read. Following an indication that the Holder did not oppose me having regard to this additional information, I have decided to have regard to this additional material. At the hearing Fiona McNeil of Counsel instructed by Brett Doyle of Clayton Utz represented the Opponent, appearing in person (Mr Doyle appearing by telephone) and Stephen Rebikoff of Counsel instructed by Paul Fong of Watermark, represented the Holder, also appearing in person.
I am a delegate of the Registrar of Trade Marks and I am to decide the opposition as required by Reg 17A.34N which provides that, unless the proceedings are discontinued or dismissed, the Registrar must, at the end, decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which any ground on which the the IRDA was opposed has been established. In doing so I take account of the written record comprised of the materials mentioned in the preceding paragraphs and the oral submissions made at the hearing.
The Opponent
The Opponent is a technology company, based in the United States and exceedingly well-known throughout the world. The Opponent is the registered owner of numerous trade marks in Australia including the mark listed below (‘Opponent’s Trade Mark’).
Mark Priority Date Opponent’s Goods 754377
THINK DIFFERENT29 Aug 1997 Class 16: Newsletters, brochures, pamphlets, folders and posters dealing with the subject of computers; paper and stationery, namely writing and notepads; decalcomanias; stickers; pens
La Perle 1 and 2 contain the following claims/statements:
· The Opponent was founded in 1976 and since that time has offered countless technology-related products including the iPhone, iPad, Apple Watch and iPod devices. The Apple brand is exceedingly well-known internationally with a very loyal customer base.
· In 1997 the Opponent’s co-founder Steve Jobs returned to become CEO and invited agencies to present new slogans for the Opponent. An advertising campaign revolving around the slogan ‘THINK DIFFERENT’ was chosen and ran from 1997. This initial, enormously successful, campaign included a TV commercial and promotional posters featuring historic figures. Further uses of THINK DIFFERENT included use on the Apple website and as part of the packaging for iMac personal computer product, the sales of which have been substantial.
· The THINK DIFFERENT advertising campaign has won numerous awards and received significant media recognition.
· The Opponent’s global sales and marketing expenditure is highly significant, as are its sales of the iMac range of personal computers.
· The term ‘Think Different’ is an ungrammatical phrase, which the Opponent has held as a registered trade mark in Australia since 1997.
· The Declarant does not believe that the Holder intends to use the Trade Mark for the whole range of Holder’s Goods, rather the Holder is engaged in watch-making along with products incidental to the development of watches.
· Due to the commercial rivalry between the parties, arising from Opponent’s launch of the Apple Watch product in 2014, the Holder has sought to misappropriate the Opponent’s goodwill by seeking to register various trade marks connected to the Opponent, including the Trade Mark, ONE THING, and SWATCH ONE MORE THING, the phrase ‘one more thing’ being associated with Steve Jobs. This conduct falls short of what is expected from experienced business people.
The Holder
The Holder is a company based in Switzerland that, amongst other things, has developed the SWATCH watch.
The Aebi Declaration contain the following claims/statements:
· Established in 1985, the Holder took over the development, production and marketing of the very successful Swatch watch product, which by 2006 had reached sales of 333 million.
· The Holder has released products with NFC chips that can communicate with mobile phones and other readers that can be used for contactless payments, as well as fitness watches and other battery related products. As of 2015 the CEO of the Opponent expressed an intention to invest in research in areas such as electronic chips, batteries, touch screens, solar panels and other materials.
· The Holder has offered its Swatch watches for sale in Australia since 1985 with significant sales since then.
· The term ‘think different’ is an ordinary English expression. The Opponent used the term for an advertising campaign in 1997 but since 2002 its use of the term has been very limited. The Opponent now seeks to register THINK DIFFERENT as a trade mark for goods in class 9 despite not using it in any significant manner since 2002.
· The Holder has adopted the Trade Mark because the term ‘tick’ is a reference to the ticking sound made by analogue watches and ‘different’ connotes that the Holder’s product is unique and special. The Trade Mark is a variant of the Holder’s moto ‘Always new, always different’, which was used by the Holder in the 80s and 90s. The Holder first used the Trade Mark in connection with watches sold in Switzerland in 2016 and in respect of certain special edition watches released in connection with the Olympic Games in Brazil. The watches sold by the Holder in Switzerland featured contactless payment technology that enabled those watches to be used as an alternative to cash or cards.
Grounds of Opposition, Onus and Standard of Proof
As indicated above in the SGP the Opponent nominated grounds of opposition under ss 42(b), 44, 59, 60 and 62A. To successfully oppose the application to extend protection for the IRDA the Opponent needs to establish at least one of those grounds.
The onus of proof in an opposition rests upon the Opponent.[1] The relevant standard of proof is the ordinary civil standard based on the balance of probabilities.[2] The date at which the rights of the parties are to be determined is 16 July 2015, being the convention priority date of the application (‘the relevant date’).[3]
[1] Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58, [32].
[2] Following Pfizer Products Inc v Karam (2006) 70 IPR 599, [6]-[26], and Telstra Corporation Limited v Phone Directories Company Pty Ltd [ 2015] FCAFC 156, [133].
[3] Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592, 595, see also s29(1) of the Act.
Discussion
Section 44
The relevant provisions of the Act with respect to the ground of opposition pursuant to s 44 are reproduced below:
Section 44 - Identical 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)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; 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).(2)…
(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.Section 10 - Definition of deceptively similar
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.
To successfully oppose the application pursuant to s 44 of the Act the Opponent must establish the requirements of s 44(1), i.e. that at least one of the trade marks upon which it relies:
· has a priority date which is earlier than that of the Trade Mark (‘the first requirement’);
· is substantially identical with or deceptively similar to the Trade Mark (‘the second requirement’); and
· is in respect of similar goods, and/or services which are closely related to, the Holder’s Goods (‘the third requirement’).
In the event that each of these requirements are satisfied by the Opponent it may be possible for the Registrar to accept the application (or allow it to proceed to registration) if the Registrar is satisfied, pursuant to ss 44(3) and 44(4) of the Act, that there has been honest concurrent use of the Trade Mark, other circumstances exist which would make registration of the Trade Mark proper, or that the Holder has continuously used the Trade Mark beginning before the priority date of the Opponent’s relied upon mark.
The Opponent has particularised the ground of opposition in the SGP by reference to the Opponent’s Trade Mark which has an earlier priority date than the Trade Mark. It is then necessary to consider if this mark is registered in respect of similar goods to the Trade Mark.
Similar goods
Section 14 of the Act relevantly provides:
14Definition of similar goods and similar services
(1)For the purposes of this Act, goods are similar to other goods:
(a)if they are the same as the other goods; or
(b)if they are of the same description as that of the other goods.
(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.
McCormick & Company Inc v McCormick summarises the legal principles applicable when determining if the goods for which the Opponent’s Trade Mark is registered are goods of the same description as the Holder’s Goods as follows:
Whether the relevant goods are of the same description is essentially a question of fact.
The authorities establish that there are three principal factors to be considered in this regard. They are: (1) the nature of the goods, including their origin and characteristics; (2) the uses made of them, including their purpose; and (3) the trade channels through which the goods are bought and sold. As to the last-mentioned matter, it may be relevant to consider whether the goods being compared are produced by the same manufacturer or distributed through the same channels; whether they are sold in the same shops; whether they are sold to the same sort of customers; and whether those engaged in the manufacture and distribution of the goods are considered as belonging to the same trade: see In Re Jellinek’s Application (1946) 63 RPC 59 at 70-72; In Re John Crowther & Sons (Milnsbridge) Ltd’s Application (1948) 65 RPC 369 (“Crowther’s Application”) at 372; In Re Frank George Whiting’s Application (1952) 69 RPC 219 at 221; and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 at 94. As the High Court stated in Southern Cross Refrigerating Co v Toowoomba Foundry Pty Ltd (1954) 91 CLR 592 (“Southern Cross”) at 606-607:
The fact that examination of the nature of the applicant’s goods may, by itself, induce an observer to conclude that they are different in character from those of an opponent, and designed to serve different purposes, is by no means conclusive. Nor is the fact that the applicant’s goods are not specified by the regulations as being within the same class of goods: see In re The Australian Wine Importers Ltd (1889) 41 Ch D 278, at p 291 and Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84, at p 90 per Latham CJ. There may be many matters to be considered apart from the inherent character of the goods in respect of which the application is made and some indication of what matters are relevant to this inquiry was given by Romer J in In re Jellinek’s Application (1946) 63 RPC 59. Romer J thought it necessary to look beyond the nature of the goods in question and to compare not only their respective uses but also to examine the trade channels through which the commodities in question were bought and sold. Shortly after the decision in Jellinek’s Case … the Assistant-Comptroller elaborated on the observations of Romer J in the following manner: ‘In arriving at a decision upon this issue the reported cases show that I have to take account of a number of factors, including in particular the nature and characteristics of the goods, their origin, their purpose, whether they are usually produced by one and the same manufacturer or distributed by the same wholesale houses, whether they are sold in the same shops over the same counters during the same seasons and to the same class or classes of customers, and whether by those engaged in their manufacture and distribution they are regarded as belonging to the same trade. In the case of Jellinek’s Application …, Romer J classified these various factors under three heads, viz., the nature of the goods, the uses thereof, and the trade channels through which they are bought and sold. No single consideration is conclusive in itself, and it has further been emphasized that the classifications contained in the schedules to the Trade Marks Rules are not a decisive criterion as to whether or not two sets of goods are “of the same description”’: Inre an Application by John Crowther & Sons (Milnsbridge) Ltd (1948) 65 RPC 369, at p 372. Much the same considerations are evident in the observation of Dixon J (as he then was) in Reckitt & Colman (Australia) Ltd v Boden (1945) 70 CLR 84 when he said: ‘What forms the same description of goods must be discovered from a consideration of the course of trade or business. One factor is the use to which the two sets of goods are put. Another is whether they are commonly dealt with in the same course of trade or business. In the present case, the goods are quite different, their uses are widely separated and they are not commonly sold in the same kinds of shops or departments’ (1945) 70 CLR, at p 94.
On the one hand, goods are not necessarily of the same description simply because they are sold for human consumption and in common trade channels: see, for example, In Re J & J Colman Ltd’s Application (1929) 46 RPC 126, where mustard and semolina were held not to be goods of the same description. See also G Wood, Son & Co Ltd v McVitty & Co Pty Ltd (1964) 34 AOJP 2601 and In Re Chan Li Chai Medical Factory (HK) Ltd’s Application (1990) 19 IPR 140 at 144. On the other hand, the expression “goods of the same description” is not construed restrictively and regard is paid to the commercial context in which the goods in question are bought and sold: see Rowntree plc v Rollbits Pty Ltd (1988) 10 IPR 539 at 546 and Dinning v New Balance Athletic Shoe Inc (1992) AIPC 38,719 at 38,725. [4]
[4] [2000] FCA 1335 [17].
The Holder’s Goods broadly consist of IT products and peripherals. The goods for which the Opponent’s Trade Mark is registered are ‘Newsletters, brochures, pamphlets, folders and posters dealing with the subject of computers; paper and stationery, namely writing and notepads; decalcomanias; stickers; pens’.
While both the Holder’s Goods and some of the goods for which the Opponent’s Trade Mark is registered relate to the IT industry, they are otherwise very different products. In short, the nature, uses and (to a lesser degree) trade channels of IT equipment and written material dealing with the subject of computers are very different. While IT manufacturers may produce written material (such as manual or guides) for their own products (and hence sold as part of the products), the use of a trade mark on such material is incidental to the use of the trade mark on IT products. One industry involves publishing and the supply of promotional material and the other involves high technology manufacturing, they can in no way be seen as belonging to the same trade. IT products and published material are generally sold at different price points and are used for different purposes. Ultimately I conclude that the respective goods are not similar and find that the Opponent has failed to establish the ground of opposition under s 44 of the Act.
Section 60
Section 60 of the Act is reproduced below:
Section 60 - Trade mark similar to trade mark that has acquired a reputation in Australia
The registration of a trade mark in respect of particular goods or services may be opposed on the ground that:
(a)another trade mark had, before the priority date for the registration of the first‑mentioned trade mark in respect of those goods or services, acquired a reputation in Australia; and
(b)because of the reputation of that other trade mark, the use of the first‑mentioned trade mark would be likely to deceive or cause confusion.
To establish a ground of opposition under s 60 an opponent must demonstrate that as at the relevant date there was another trade mark which had acquired a reputation in Australia amongst a significant or substantial number of persons in the relevant market such that use of the trade mark would be likely to deceive or cause confusion.[5]
[5] The present paragraph and the following paragraphs summarizing the requirements under s 60 of the Act are paraphrased from the decision of the Registrar’s Delegate in Australian Boutique Markets Pty Ltd v Rachael Zelensky and Jeffrey Zelensky [2013] ATMO 97.
In McCormick & Co Inc v McCormick, Kenny J considered what is intended by the word ‘reputation’ as used in s 60. Her Honour had consulted the Macquarie Dictionary and on the basis of the definition provided concluded that it was ‘the recognition of the [trade mark] by the public generally’.[6] Her Honour quoted with approval the following words of Lockhart J in Re ConAgra Inc v McCain Foods (Aust) Pty Ltd:
[R]eputation within the jurisdiction may be proved by a variety of means including advertisements on television or radio, or in magazines and newspapers within the forum. It may be established by showing constant travel of people between other countries and the forum and that people within the forum, (whether residents there or persons simply visiting there from other countries) are exposed to the goods of the overseas owner …[7]
[6] [2000] FCA 1335, [81].
[7] (1992) 33 FCR 302, 343.
On the subject of reputation Kenny J also referred to the Hugo Boss decision, where the Registrar’s delegate observed:
[I]t is true that the assessment of the reputation of a trade mark goes far beyond mere examination of sales or turnover of goods sold under that trade mark and contemplation of the advertising and promotional figures.
As regards a trade mark, its reputation derives both from the quantum of sales under that mark and also its esteem, or image, projected by that trade mark. The quantum of sales, advertising and promotion contributes to the ‘recognition’ component of the trade mark’s reputation. The credit, image and values projected by a trade mark attaches to the ‘esteem’ component of the reputation as do the public events and other trader’s marks with which [the] owner of the trade marks in question chooses to associate the trade marks via sponsorships, cross-promotions, ‘contra deals’ and so forth.
It follows that a trade mark used in relation to goods with comparatively low sales may have a high and strong reputation by virtue of the high credit or esteem in which it is held, or, conversely, that a trade mark which has very high sales may have a strong reputation notwithstanding the lack of esteem that attaches to it. The particular popular images, or sets of values, that attach to the trade mark are also, therefore, important parts of the reputation of the trade mark and may be as strong an associative force in the minds of the public as the association of the trade marks with the goods or services themselves.[8]
[8] Hugo Boss AG v Jackson International Trading Co Kurt D Bruhl Gesellschaft MbH & Co KG (1999) 47 IPR 423, 426.
As stated above, in assessing reputation under s 60, what constitutes a significant or substantial number of persons in the relevant market must be considered. The case of Le Cordon Bleu BV v Cordon Bleu International Ltee[9] was decided under s 28(a) of the (now repealed) Trade Marks Act 1955. That provision did not refer to ‘reputation’ at all, only that use of the impugned trade mark would be ‘likely to deceive or cause confusion’. Nevertheless the words of Heerey J provide some guidance:
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 … We are here concerned with foodstuffs sold in supermarkets, delicatessens, milk bars and other retail outlets. The relevant market is virtually the entire Australian population from early teenage years onwards.[10]
[9] (2000) 50 IPR 1.
[10] Ibid 20. Heerey J’s decision was overturned on appeal to the Full Federal Court, although not on the point quoted. Indeed the court specifically noted that his approach contained no error; see Renaud Cointreau v Cordon Bleu International Ltee [2001] FCA 1170, [75].
Furthermore, in practice, once the requisite reputation is demonstrated, the likelihood of deception or confusion increases the more closely the trade marks resemble each other.[11]
[11] Qantas Airways Limited v Edwards [2016] FCA 729 at [142].
The Opponent has particularised the ground of opposition in the SGP in the manner set out below:
Before the priority date of the Application, another trade mark had acquired a reputation in Australia and because of that reputation, the use of the Applicant's Trade Mark on the Designated Goods would be likely to deceive or cause confusion.
The Opponent relies on its reputation in the trade mark THINK DIFFERENT.
While noting the significant reputation of the Opponent globally, and success of the THINK DIFFERENT advertising campaign, there is no evidence before the Registrar of any significant use of THINK DIFFERENT in Australia at all, or any evidence of use of THINK DIFFERENT in any significant way internationally since 2002. In particular:
a)There is no direct evidence that the Opponent’s THINK DIFFERENT advertising campaign had any presence in Australia. While I acknowledge the evidence that the THINK DIFFERENT advertising campaign was a global campaign and thus most likely had some presence in Australia the Opponent provides no evidence of what form the campaign took in Australia, such as what advertisements (if any) aired on what media on what dates, and whether the Opponent’s THINK DIFFERENT posters were ever displayed in Australia. The Opponent does provide evidence of its global advertising expenditures but does not identify what portion of those expenditures, if any, featured THINK DIFFERENT.
b)There is no evidence that the Opponent has engaged in any advertising campaign featuring THINK DIFFERENT as a slogan since 2002.
c)There is no evidence, such as survey evidence, of any awareness by Australian consumers of the THINK DIFFERENT advertising campaign, either in 1997 or at the relevant date.
d)The isolated use of THINK DIFFERENT between 2002 and 2005 on the Opponent’s websites do not assist in establishing reputation; there is no evidence of the number of Australian visitors to the Opponent’s website on those particular days.
e)The Opponent’s use of THINK DIFFERENT since 2009 has been limited to use in small font as part of the specifications displayed on the packaging of its iMac personal computers. There is no evidence of use on the iMac product itself or in marketing material connected to the iMac product. While noting that the sales of the iMac personal computer have been very substantial, I find the placement of THINK DIFFERENT is not sufficiently prominent to lead to the conclusion that, by reason of this use, the Opponent has acquired any reputation in the THINK DIFFERENT Mark.
In summary while noting the significant reputation of the Opponent globally and the success of the THINK DIFFERENT advertising campaign between 1997 and 2002 because of the lack of evidence of use in Australia I am not satisfied that as at the relevant date the Opponent’s Trade Mark had acquired a reputation in Australia. The Opponent has therefore failed to establish the ground of opposition pursuant to s 60 of the Act.
Section 42
Section 42 of the Act is reproduced below:
42 - Trade 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 Opponent pressed this ground of opposition solely on the basis that the use of the Trade Mark would be contrary to law (s 42(b)). The onus is on the Opponent to establish that use of the Trade Mark by the Holder would be, rather than could be, contrary to law on the balance of probabilities.[12] The relevant time for assessing whether an application is contrary to law is at the relevant date but ‘looking forward to prospective conduct after registration’.[13]
[12] Advantage Rent-a-Car Inc v Advantage Car Rental Pty Ltd [2001] FCA 683.
[13] Time Warner Entertainment Co LP v Stepsam Investments Pty Ltd [2004] 59 IPR 343, 353.
The Opponent has particularised the ground of opposition in the SGP as follows:
Having regard to the reputation that Apple Inc. enjoys in the trade mark THINK DIFFERENT, a distinctive and distinguishing phrase used by the Opponent in relation to the Opponent's goods and services, use of the Trade Mark on the Designated Goods would be misleading or deceptive or likely to mislead or deceive in contravention of section 18 of the Australian Consumer Law or would pass off the Applicant's Designated Goods as and for those of the Opponent or as associated with the Opponent in breach of the common law.
In Target Australia Pty Ltd v Catchoftheday.com.au Pty Ltd[14] the Delegate noted that in respect of the s 42(b) ground of opposition the Opponent need not rely on the reputation of a trade mark. In particular the Delegate stated:
Further, the Opponent need not rely on the reputation of a trade mark: it is only necessary that the indicium relied upon by the Opponent has a reputation such that the indicium is associated in the public mind with the Opponent: Pacific Dunlop Ltd v Hogan [1989] FCA 185; (1989) 23 FCR 553; (1989) 87 ALR 14; (1989) 14 IPR 398; [1989] ATPR 40-948; [1989] AIPC 39-044; and see QANTAS Airways Ltd v Danniel Amadio [2011] ATMO 84. Nor is this forum confined to considering only trade marks – when an indicium is associated with a trader because of usage by the public rather than the trader, a Registrar’s delegate must consider the argument put by an opponent: Advantage.[15]
[14] [2015] ATMO 54.
[15] Ibid [39].
This differs from the requirement under s 60 of the Act. However this different requirement does not result in a different outcome with respect of the s 42(b) ground of opposition. For the reasons set out in paragraph 30 above, I am not satisfied that at the relevant date the Opponent had sufficient reputation in THINK DIFFERENT to ground an action under ss 18 of the Australian Consumer Law.
Hill J in Re Equity Access Pty Ltd v Westpac Banking Corporation also addressed the relationship between s 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.[16]
[16] [1989] FCA 506, [40] (citations omitted).
For these reasons I am not satisfied that use of the Trade Mark by the Holder would be contrary to law. Therefore, the Opponent has failed to establish the ground of opposition under s 42(b).
Section 59
Section 59 of the Act is reproduced below:
59 - Applicant 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.
The relevant date for assessing the Holder’s intention to use the Trade Mark is the priority date being 16 July 2015.[17]
[17] See the discussion of the authorities in Foxtel Management Pty Ltd v 111Pix.com Limited [2012] ATMO 29, [31]. The relevant authorities are Suyen Corporation v Americana International Limited [2010] FCA 638; (2010) 87 IPR 262 (‘Suyen’) and Food Channel Network Pty Ltd v Television Food Network GP [2010] FCAFC 58; (2010) 86 IPR 437. (‘Food Channel’).
The Opponent has particularised the ground of opposition in the SGP in the manner set out below:
The Applicant did not at the date of application use, intend to use or intend to authorise the use of the Trade Mark in Australia on all of the Designated Goods. Neither did the Applicant intend to assign the Application to a body corporate about to be constituted for use by that body corporate in Australia in respect of the Designated Goods.
The Designated Goods are very broad. An intention to use the Trade Mark on such a range of goods is not supported by the Applicant's website or enquiries made in relation to the Applicant's business.
The nature of the intention in s 59 was considered by Jacobsen J in Health World Ltd v Shin-Sun Australia Pty Ltd (‘Health World’) where he stated:
In my view, the intention, or lack thereof, to which s 59 is directed, is a ‘real and definite intention’ of the applicant for registration, to use the mark publicly as a trade mark, although it is not necessary that the intention be immediate or within a limited time.[18]
[18] [2008] 75 IPR 478, [160].
There is a presumption that where an application has been filed the applicant, has the requisite intention. However:
There is authority for the proposition that where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence, a finding of lack of intention may be made.
The principle which underlies these authorities seems to me to be that the evidentiary onus shifts to the applicant for registration where an opponent makes a prima facie case of lack of intention to use the mark.[19]
[19] Ibid [162]-[163] (citations omitted).
Jacobsen J also recognised the difficulty that an opponent has in establishing a ground under s 59, stating in the same case:
The subjective nature of the intention, the presumption of intention flowing from the application for registration and the onus on an opponent usually make it difficult for an opposition or an application for rectification, to succeed on this ground.[20]
[20] Ibid [161] (citations omitted).
In view of the authorities discussed above, the onus of establishing the ground of opposition pursuant to s 59 remains with the Opponent until it has established a prima facie case that on the relevant date the Holder lacked the requisite intention. If the Opponent establishes a prima facie case the onus then shifts to the Holder for rebuttal.
Having considered the decisions of Dodds-Streeton J in Suyen, the Full Court in Food Channel, and Jacobson J in Health World the Delegate in Foxtel Management Pty Ltd v 111Pix.com Ltd stated:
I note that [the authorities] all appear to agree that lack of intention might be inferred ‘where an applicant for registration has been put on notice that its intention to use the mark was in issue, and has not responded to the opponent’s evidence’. It is nevertheless clear from all three judgments that such an inference will not be drawn lightly. Jacobson J, for example, cited two such cases, being Phillip Morris Products SA v Sean Ngu (‘Phillip Morris’) and Tommy Hilfiger Licensing Inc v Tan (‘Phillip Morris’), both involving somewhat particular circumstances. In Phillip Morris the opponent had sought production of documentation substantiating various claims regarding its proposed use made by the applicant in a letter to the opponent’s attorneys, but the applicant neither responded to the Notice to Produce … nor did it file any written submissions or appear at the hearing. Tommy Hilfiger, for its part, was decided by the Hearing Officer concerned on the basis that the applicant’s intention had to persist beyond the filing date and thus that the investigations attested to in the opponent’s evidence suggesting that there had been no actual use in the 20 or so months since the opposed application was filed required some formal ‘rebuttal, denial or answer’ from the applicant. As already noted, however, it is now clear that the relevant date for assessing the applicant’s intention is the date of application. Moreover, Dodds-Streeton J stressed in Suyen at [207] that:
There is long standing recognition that the absence of the requisite intention to use cannot be inferred from lack of use per se, particularly as there may be good reason to defer use until the protection of registration is secured.
In Suyen at [212] to [214] her Honour provided some further examples of cases where lack of the requisite intention had been inferred, all of which again involve quite particular circumstances going beyond mere non‑use:
Because the intention concerns the applicant’s state of mind, it is, as the authorities make clear, difficult for an opponent to discharge the onus it bears under s 59 of the Act. Opposition has nevertheless succeeded in a number of cases. The intention has been held to be contra-indicated where the applicant company was not operating and failed to provide evidence, had no capacity to trade in the relevant goods or services or was subject to a relevant contractual restraint: see Daimaru Pty Ltd v Kabushiki Kaisha Daimaru (1990) 19 IPR 129. In other cases, opposition has succeeded because the evidence established the existence of only illegitimate purposes, including the use of registration defensively, speculatively, to gain competitive advantage or to sell the trade mark: see also John Batt at 439-40.
In Food Channel, the Full Court observed that ‘only a low threshold has been set with regard to intention to use’: at [67]. Their Honours referred to Michael Sharwood & Partners Pty Ltd v Fuddruckers Inc (1989) 15 IPR 188 (in which the applicant companies appeared not to carry on business, their location was illegal for a restaurant for which service the trade mark was to be registered and they adduced no evidence in answer to the opponent’s material) and to Danjaq LLC v Resource Capital Australia Pty Ltd [2004] ATMO 18; (2004) 61 IPR 651 (in which the applicant had made a large number of applications that were subsequently permitted to lapse, had a history of ‘cybersquatting’ and advanced the evidence of an unreliable sole witness. It was therefore inferred that the applicant was trading in registrations and had neither the capacity nor means to use the trade mark.).
Opposition has also succeeded where the applicant advances no or no credible evidence of the intention or concedes its absence; or where documents or the circumstances indicate an intention which is, for example, not sufficiently definite, or not directed at use as a trade mark.
In Health World, Jacobson J at first instance concluded that there was no intention to use the mark where the applicant’s principal witness did not make the final decisions on such matters, and did not distinguish between the applicant company and another company in relation to steps said to evidence an intention to use the mark. The person who did constitute ‘the controlling mind’ of the applicant company gave limited evidence which disclosed no positive intention to use the trade mark on goods of the relevant class. Rather, he testified that ‘we wanted to widen our business’ to use the mark on any goods or products the company might make.
In Food Channel, the Full Court upheld the appeal on grounds, inter alia, that the primary judge erred in finding that the applicant had no intention to use the trade mark where its sole director (and ‘controlling mind’) gave unchallenged (and not inherently improbable) evidence of intention to use the mark, and there was ‘some evidence not found to be unreliable’ that the assignor company (controlled by the same person) had used the mark in respect of the relevant class of goods: at [82]. The Full Court concluded that ‘in this state of the evidence, the judge could not reasonably conclude that [the opponent] had discharged its onus on the s 59 issue’: at [83].
Suyen itself concerned opposition based on s 59 to a trade mark with a 2003 priority date. The opponent in that case submitted that, in addition to there having been no significant use prior to the opposition proceedings commencing, two further circumstances shifted the evidentiary onus to the applicant. Firstly, the applicant had apparently only made scant reference to Australia in a notice of opposition it had filed in the USA in 2006 in which it had purported to set out its sales, marketing, advertising and other activities and other activities under a closely related trade mark. Secondly, as at three specific dates in 2008, being dates when the opponent’s attorneys had checked the applicant’s website, the ‘website did not evidence any intention to use [the trade mark] in Australia’ and, inter alia, did not appear to ‘target, and was not accessed by, Australian-based purchasers’. Dodds-Streeton J however considered that these matters were not sufficient to shift the opponent’s evidentiary onus … [21]
[21] [2012] ATMO 29, [36]-[39].
The Opponent’s evidence on this point appears to consist of a statement from Mr La Perle that the Holder is primarily involved in the watch-making business and is thus unlikely to use the Trade Mark for all the Holder’s Goods, and the suggestion that the Holder has registered the Trade Mark with an intention to ‘troll’ the Opponent as part of some form of commercial rivalry rather than use it for the Holder’s Goods. The second point is dealt with in greater detail under the s 62A ground but in summary I am unpersuaded that, given the evidence of actual use of the Trade Mark outside Australia (in Brazil and Switzerland), the sole purpose of the application is to ‘troll’ a commercial competitor by seeking to register a mark that is a variant of an advertising slogan the competitor last used (in any significant manner) in 2002.
With respect to the statement of Mr La Perle that the Holder is unlikely to use the Trade Mark for all the Holder’s Goods, I am unpersuaded that his opinion is sufficient to shift the evidentiary onus, especially given that the Holder has provided evidence of actual use of the Trade Mark by the Holder (albeit outside Australia) for watches featuring contactless payment technology and the continuing growth of the field of ‘wearable technology’ such as the Opponent’s Apple Watch. The Opponent has failed to establish a prima facie case that the Holder lacked the requisite intention as at the relevant date and has, consequently, failed to establish the ground of opposition pursuant to s59 of the Act.
Section 62A
Section 62A of the Act is reproduced below:
62A Application made in bad faith
The registration of a trade mark may be opposed on the ground that the application was made in bad faith.
The Explanatory Memorandum to the Trade Marks Amendment Bill 2006 provided some non-exhaustive examples of applications made in bad faith:
·persons who monitor new property developments, register the names of new developments as trade marks for a number of services and then threaten the property developers with trade mark infringement proceedings unless the developers licence or buy the trade marks;
·persons who have a history of applying for trade marks that are deliberate misspellings of other registered trade marks;
·persons who identify trade marks used overseas but with no Australian use as yet who then apply to register the trade marks in Australia for the express purpose of selling them to the overseas owners.
The case of Fry Consulting Pty Ltd v Sports Warehouse Inc (No 2) is a current leading Australian authority on s 62A. In that case, Dodds-Streeton J made the following comments, quoting from Harrison’s Trade Mark Application[22]:
Clearly the court, when considering bad faith, cannot apply a purely subjective test, called by Lord Hutton ‘the Robin Hood test’. The dishonest person or one with low standards cannot be permitted to obtain trade mark registrations in circumstances where a person abiding by a reasonable standard would not. The registration of a trade mark is designed to enable bona fide proprietors to protect their proprietary rights without having to prove unfair trading. Registration is not provided to help those with low moral standards.
… The words ‘bad faith’ suggest a mental state. Clearly when considering the question of whether an application to register is made in bad faith all the circumstances will be relevant. However the court must decide whether the knowledge of the applicant was such that his decision to apply for registration would be regarded as in bad faith by persons adopting proper standards.[23]
[22] [2004] EWCA Civ 1028; [2005] FSR 10.
[23] [2012] FCA 81, [147].
Her Honour continued later in the same decision:
The formulation in United Kingdom authority of bad faith as falling short of the standards of acceptable commercial behaviour observed by reasonable and experienced persons in a particular area is, in my view, an apt touchstone. An overly literal application may, however, tend to negate the relevance attributed to the applicant’s mental state in the combined test preferred in Harrison.
Further, in my view, mere negligence, incompetence or a lack of prudence to reasonable and experienced standards would not, in themselves, suffice, as the concept of bad faith imports conduct which, irrespective of the form it takes, is of an unscrupulous, underhand or unconscientious character.[24]
[24] Ibid [165]-[166].
The Opponent has particularised this ground of opposition in the SGP as follows:
Before the adoption of the Trade Mark and before the priority date of the Application, the Applicant knew or ought to have known that the sign THINK DIFFERENT was associated with the Opponent; and the Applicant also knew or ought to have known that adoption and use of the trade mark TICK DIFFERENT would be likely to be confused with the Opponent's THINK DIFFERENT trade mark or to suggest a connection with the Opponent or the Opponent's business or goods and services. The Applicant has previously sought to mimic or adopt the Opponent's trade marks, for example ONE MORE THING, and so a pattern of misappropriation can be inferred, as can an intention to engage in deliberate unfair competition. The adoption of the Trade Mark by the Applicant and the filing of the International Registration and its Australian Designation were therefore attempts to gain an unjustifiable benefit and to misappropriate the Opponent's valuable goodwill. This conduct falls short of acceptable commercial behaviour to be expected of reasonable and experienced business people.
The onus is on the Opponent to establish bad faith and it will not be found easily given the serious nature of the allegation.[25] The Opponent’s Trade Mark has not been used significantly since 2002 and does not appear to have been used at all on the Opponent’s products that compete with the Holder’s watch products (namely the Apple Watch and related products). The Holder has also provided direct evidence of its reasons behind the adoption of the Trade Mark and in particular the Holder’s previous use of ‘different’ as part of a slogan for its products. Given this material, I am not satisfied that the Holder’s decision to adopt the use of the Trade Mark is conduct of unscrupulous, underhand or unconscientious character. In particular I am not satisfied that the opinions of third party members of the media that the Holder is ‘trolling’ (or similar) the Opponent amount to an appropriate basis to find the requirements under s 62A satisfied. Nor, given the conclusion reached by the Hearing Officer in Apple Inc v Swatch AG[26], do I find that the Holder has engaged in a ‘pattern of misappropriation’ of the Opponent’s intellectual property or similar behavior. Consequently I find that the Opponent has failed to establish the ground of opposition under s 62A.
[25] Hard Coffee Pty Ltd v Hard Coffee Main Beach Pty Ltd [2009] ATMO 26, [12].
[26] [2019] ATMO 19.
Decision
Regulation 17A.34N provides:
17A.34N Decision on opposition
(1)Unless the opposition proceedings are discontinued or dismissed, the Registrar must decide:
(a)to refuse protection in respect of all of the goods or services listed in the IRDA; or
(b)to extend protection in respect of some or all of the goods or services listed in the IRDA (with or without conditions or limitations);
having regard to the extent (if any) to which the grounds on which the IRDA was opposed have been established.
(2) The Registrar must notify the International Bureau of the Registrar’s decision.
The Opponent has not established the grounds on which the IRDA was opposed and it is appropriate that the Registrar decides to extend protection to the IRDA.
The IRDA may then proceed to protection 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 protection shall not occur until the appeal has been decided or discontinued and the protection of the IRDA be subject to any orders of the Court.
The International Bureau will be notified of the Registrar’s decision.
Costs
The Holder has sought an award of costs in its favour. I see no reason to depart from the general rule that costs follow the event. I accordingly award costs against the Opponent under section 221 of the Act in the relevant amounts under Schedule 8 of the Trade Mark Regulations 1995.
Nicholas Smith
Hearing Officer
Oppositions and Hearings
25 June 2019
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22
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