Metropage Pty Ltd sought to register the trade mark IBAD under Australian Trade Mark Application No. 1453767 for the following goods in Class 9: “Electronic information display terminals including electronic information kiosks, public access display apparatuses and interactive business advertising displays.”
Apple Inc. opposed registration of the trade mark at the Australian Trade Marks Office under section 60 of the Trade Marks Act 1995 (Cth). Section 60 provides that the registration of a trade mark may be opposed on the ground that another trade mark had acquired a reputation in Australia that pre-dated the priority date for the registration, and because of the reputation in that mark, use of the applicant’s mark would be likely to deceive or cause confusion. Apple Inc. relied on its trade mark iPad.
The parties agreed that the trade mark iPad “enjoyed a substantial reputation as one of the world’s most famous brands.” This reputation resulted from “widespread reference to the [iPad] Device in contemporary television shows, as well as its extensive marketing…”, significant sales of the iPad device in Australia including sales to major corporations, the Australian Government and State Government bodies, use of the iPad device by Australian businesses, as well as considerable advertising expenditure in Australia and New Zealand.
The parties disagreed as to whether use of the trade mark IBAD would deceive or cause confusion.
The applicant explained the derivation of its IBAD trade mark as “an acronym formed from ‘Interactive Business Advertising Display’”, and stated that its goods - display products such as free-standing display kiosks or display devices mounted in shopfront windows - were different to Apple Inc.’s iPad devices. The applicant also argued that Apple Inc.’s extensive reputation and its trade marks would count against a likelihood of confusion.
The Hearing Officer was unconvinced by the applicant’s arguments. The single example of the applicant’s goods provided in evidence was a rectangular touch-screen computer, which the Hearing Officer considered was very similar to Apple Inc.’s iPad device, and which bore the trade mark IBAD represented in the form “iBAD”. The trade marks IBAD and iPad were held to be visually and aurally very similar.
There was held to be a real risk of confusion if the applicant’s mark was used for its goods of interest. Accordingly, registration of the trade mark was refused and costs were awarded to Apple Inc.