Cell
phone repairers better be careful. When designing
the trademark, repairer may like to highlight the brand of the smart phone his or
her service covers. While it may help business, not every smart phone company would
be happy to see its brand become part of other’s trademark, especially APPLE
Inc.(“APPLE”)
On June 27, 2018, a local cell phone repairer filed trademark
application for “APPLE TREE MOBILE SHOP (with drawing)”(Reg. No. 01972030, as
shown below). Such trademark was granted on February 16, 2019, designated for
service including cell phone or communication equipment repair or installation.
APPLE filed opposition on May 14, 2019, and the Intellectual Property Office (“IPO”)
rendered decision on April 7, 2020, finding the opposed trademark should be
cancelled.
APPLE held the position that:
- Its series trademarks, including the word mark “APPLE” (shown below), are famous trademarks. Since the opposed trademark has the same characters “APPLE”, the opposed trademark is highly similar with APPLE’s famous trademark.
- The wrench presented in the opposed trademark features a smart phone drawing with APPLE’s famous “HOME BUTTON”, which is widely adopted in APPLE’s popular iPhone and iPad products. Such drawing may further lead the consumer to draw connection with APPLE’s famous products and trademark upon seeing the opposed trademark.
- The service designated by the opposed trademark cover phone installation and repair, communication equipment installation and repair, internet setting, etc. They are relevant or similar with those designated by APPLE’s famous trademark, because APPLE’s products and services have been quite diversified. For example, APPLE’s word mark is also designated for service such as computer and hardware installation or repair.
- Such high degree of similarity, plus the fame of APPLE’s trademark and similarity of service designated by the opposed trademark, enhance the inference that the application of the opposed trademark should be based on intent to imitate, and was not filed out of good faith.
The
owner of the opposed trademark replied that:
1.
In
addition to the foreign language “APPLE TREE”, the opposed trademark further
contains the drawing of a wrench. The overall appearance, and phonetic of the
opposed trademark shall be different from those of APPLE’s.
2.
Consumer,
when seeing the opposed trademark, would figure that the drawing features a
wrench, rather than APPLE’s smart phone products.
3.
Besides,
apple refers to a kind of fruit, which is not highly distinctive. Aside from APPLE,
there are other registrants whose trademarks also contain this word. Thus, consumers
should be quite familiar with such word mark and will be able to distinguish the
opposed trademark from APPLE’s asserted trademark. In sum, consumers will not
be confused simply because the two marks bear the same word “APPLE”.
The
IPO found for APPLE, cancelling the opposed trademark on the ground of Article
30.1.11, which provides that a trademark shall not be registered if such mark
is identical to or similar with other famous mark so that it may cause
confusion to the relevant public or damage the distinctiveness or reputation of
the famous mark.
1.
“APPLE” is a famous trademark:
To
this end, IPO finds that there are voluminous records supporting APPLE’s
assertion. APPLE registered its trademark since as early as 1977, and used “APPLE”
and “APPLE LOGO” as trademarks on computer product and its related accessories.
Over time, the products or services covered by these trademarks have expanded
to cover software, internet, multi-media products, education service, clothing,
and stationary. The successful delivery of service and products such as “iTunes”,
“iPod”, “iPhone”, and “iPad” further help APPLE becomes one of the greatest global
brands.
2.
The opposed trademark is similar with APPLE’s famous trademark:
The
opposed trademark presents similar word mark “APPLE”. Although there are other
elements, such as “MOBILE SHOP”, a wrench featuring a cell phone inside, and the
word “Tree”, these additional elements are not distinctive. The most appealing
portion is still the word “APPLE”, which is identical to APPLE’s famous word
mark. Further, in the wrench, there is a drawing of cell phone featuring APPLE’s
famous “home button”, which gives the impression that the mark has something to
do with repairing APPLE’s products. Conceptually, the opposed trademark is
similar with APPLE’s famous work mark.
3.
The
strength of APPLE’s trademark:
Although
the word “apple” refers to ordinary fruit, such word has no bearing with and
does not describe the nature of the goods or service the word mark is designated
to use. Thus, consumers would immediately recognize “APPLE” as the identifier
of source of the goods or service. Plus, APPLE has been using the word mark for
more than 40 years. Even if the degree of similarity is low, ordinary consumers
would immediately think of APPLE’s famous trademark upon seeing the opposed
trademark.
4.
The knowledge of the relevant consumers to the opposed trademark:
While
APPLE has submitted sufficient records supporting the finding of famous
trademark, the evidence the owner of the opposed trademark provided was not enough.
There was no record with respect to the market share, sales, and revenue in
association with the goods or service using the opposed trademark. Although the
owner of the opposed trademark submitted some evidence of trademark use, such
as Facebook fan pages and Google search results, these materials either were generated
after the application date of the opposed trademark, or have no date at all.
Thus, IPO could not find the opposed trademark was well-known among the
relevant consumers when it was filed for registration.
4.
The
registration of the opposed trademark is not based on good faith:
Considering
the well-known status of APPLE’s trademarks, and the design of the opposed
trademark that may easily make ordinary consumers think of APPLE’s goods or
service, the IPO found the opposed trademark probably was not registered out of
good faith.
Based
on the above, the IPO sided with APPLE, determining that the opposed trademark
is similar with APPLE’s famous trademark, which may confuse and mislead the
relevant consumers into believing that there is license, partnership, or other
form of contractual relationship between the owner of the opposed trademark and
APPLE. Thus, the opposed trademark should be cancelled.
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