RSS feedsA recent news report outlines some of the cost and management distraction Mr McRae has experienced in trying to protect the Macpro brand name.
The IP Australia website reveals that Apple sought to register “Macpro” and “Mac Pro” as trade marks in May 2006. Subsequently, Macpro lodged a notice of opposition. Presumably, it did this because, amongst other things, it was concerned that, if Apple’s trade mark application was granted, Mr McRae was susceptible to trade mark infringement proceedings.
IP Australia upheld aspects of the opposition based on Mr McRae’s “prior public use” of “Macpro” since 1983. Apple has appealed this decision to the Federal Court, where it is set down for a three day hearing.
This dispute provides some interesting lessons for potential trade mark applicants:
- Had Mr McRae registered “Macpro” when he came up with the name, Apple’s application is likely to have been rejected by IP Australia at the first hurdle, alleviating the need for Mr McRae to file a notice of opposition. Any appeal by Apple would have then involved IP Australia as the relevant party, not Mr McRae.
- Correspondingly, it is preferable for a trade mark applicant such as Apple (particularly where the mark is important), to undertake due diligence prior to applying for a mark, to determine whethere there is any pre-existing use of the same or similar name prior to filing an application. If there is prior use, this will frequently result in an approach being made to the user, to try to negotiate a ‘win / win’ for each party.
- There is also a risk that if one is aware of a pre-existing similar mark but lodges an application anyway, the applicant could later be found to have applied in “bad faith” contrary to section 62A of the Trade Marks Act 1995. While this provision has only been considered twice in Australia since it was introduced in 2006, the ECJ earlier this year gave guidance as to when an application might be made in “bad faith”. In short, an application might be made in “bad faith” where an applicant knew that a third party was using an identical or similar mark for an identical or similar product and the applicant intended to prevent the third party from using the mark in the future.
- Of course, one party might be reluctant to negotiate, or the parties’ activities and brands are so similar that there is no room for compromise. Perhaps this is the case here. Apple has engaged in recent, concerted efforts to have exclusive use of some terms, phrases and symbols associated with its products. For instance, over the last three years, in Australia alone, Apple has unsuccessfully opposed applications for the trade marks “MACRON” and “STATSPOD”, while successfully opposing an application for “i-photo”. In a trade mark application of its own this year, the Australian Trade Marks Office rejected Apple’s application for “POD”. Apple has also appealed this decision to the Federal Court.
