Apple applied for the extension of protection of the below trade mark in Australia under its corresponding International Registration. It is important to note the scope of the trade mark is only for the rectangular element (highlighted) and not the entire plug.
The Australian Trade Marks Office initially raised an objection under section 41 that the trade mark was not capable of distinguishing. The Office then maintained the objection in four subsequent reports, leading Apple to request to be heard.
Essentially, the Hearing Officer did not agree with the Examiner’s view that the trade mark would likely be legitimately required by other traders, noting that the three-pronged justification (that the trade mark consisted of (i) simple underlining, (ii) simple patterning/background, or (iii) part of simple, basic identification of where to place electronic connections) for the objection was flawed. The Hearing Officer found nothing to support the Examiner’s three-pronged justification.
Furthermore, the Hearing Officer noted the evidence of the ‘remarkable’ sales enjoyed by Apple of its iPhone and iPad products (the trade mark at issue being part of the charger sold with these goods) and found that the trade mark does distinguish and the goods and must, therefore, be accepted for protection.
To view the Office decision, click here.