She will not be Apple's
Australian idiom for “it will be alright” is “she’ll be apples” but recently, Apple Inc found that she won’t. A recent decision by a Delegate of the Registrar of Trade Marks (Apple Inc v Wholesale Central Pty Ltd [2010] ATMO 7) has found against Apple Inc., and in favour of a small company dealing in digital device accessories to continue to use their ‘DOPi’ brand. On the face of it the decision appears fairly obvious considering the differences in the marks in question (‘iPOD’ vs ‘DOPi’(stylised)) but the case does emphasise Apple’s litigation strategy to box-on regardless of the merits of a case.
Wholesale Central Pty Ltd filed a trade mark application for ‘DOPi’ (stylised) in Class 9 on 24 February 2007 (Australian trade mark Application No. 1162904) which was accepted by an Examiner and then opposed by Apple Inc on 21 September 2007. Although all grounds of opposition were claimed in the Notice of Opposition, only the grounds under Sections 44 and 60 of the Trade Marks Act 1995 were pursued at the Hearing.
Apple Inc sought to rely on seven previously registered trade marks in support of their opposition. However, the Delegate noted that only two of these, claiming the word iPOD alone, were relevant since the others simply covered the word iPOD in combination with other elements and were thus “effectively redundant”. Specifically, Apple had to succeed through reliance on its two registrations of the iPOD mark and if not, the other registrations would not assist.
Counsel for Apple made submissions that the particular colouring and orientation of the letter “i” in the Applicant’s mark gave the letter prominence which would result in the consumer’s attention immediately being deflected to that part of the mark thus bringing to mind the Opponent and its family of “i” products. Counsel further argued that the use of the “i” showed “bad faith” on behalf of the Applicant and supported Apple’s case for opposition.
The Delegate did not agree with Counsel’s submissions. In his decision, the Delegate pointed out that there existed a large number of “iMarks” already on the Register, many of which are owned separately by third party registrants. Moreover, the Delegate pointed to the fact that numerous “iMarks” were, in fact, included in the Opponent’s own publications. The Delegate also acknowledged that no instances of confusion had been demonstrated and held that in cases such as this where a mark has “notorious familiarity” the risk of deception or confusion is decreased. It was these factors rather than the fact that the marks look so obviously different that the Delegate based his decision. Had Wholesale Central sought to register just the word “PODi” (rather than the stylised version in question) it would have been interesting to note the differences in the decision.
This case may encourage brand owners on the other side of a legal battle with Apple Inc to stand their ground, but is unlikely to curb the tech-giant’s aggressive approach to intellectual property protection. In this case, it appears their absurd suggestion is that the letter “i” is brought to you by Apple.
