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Trade Marks Office decision too bad for IBAD
In Apple Inc. v Metropage Pty Ltd  ATMO 106, Apple Inc has successfully opposed an application to register IBAD as a trade mark in Australia.
On 13 October 2011, Metropage Pty Ltd filed to register its IBAD trade mark in Australia in relation to electronic display terminals and kiosks. The mark IBAD was said to derive from an acronym for ‘Interactive Business Advertising Display’.
In May 2012, Apple filed an opposition to the registration of the IBAD trade mark arguing that the mark was visually and aurally similar to Apple’s iPad trade mark and would cause confusion among consumers. Under section 60 of the Trade Marks Act 1995, a trade mark can be opposed on the basis that another mark has gained a reputation and because of that reputation, the use of the applied-for mark would cause confusion.
Metropage did not dispute that Apple’s iPad trade mark had gained a substantial reputation in Australia. However, it argued that its IBAD mark would not cause confusion because it would be used on goods that were different to Apple’s iPad devices. Metropage also argued that the widespread reputation and notoriety of iPad mark actually counted against Apple as it would be unlikely that consumer would confuse ‘IBAD’ with ‘iPad’.
The Delegate’s decision
Ultimately, the Trade Marks Office found in favour of Apple and refused the registration of the IBAD trade mark.
The Delegate found that Apple had indeed established a strong reputation in its iPad mark and that the Metropage’s use of IBAD would result in confusion. The Delegate noted that Metropage’s evidence of use of its IBAD mark was in connection with a touchscreen device which carried the mark in the for ‘iBAD’.
- Be extremely cautious when adopting a trade mark that is very similar to another mark which has a significant reputation, particularly if they are used with similar or associated goods and services.
- The idea that a trade mark could become so well known to the point that it actually reduces the likelihood of confusion, while a popular argument, is of limited utility.
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- Trade Marks Office decision too bad for IBAD
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