On December 5, 2017, Avex Inc. (“Avex”) filed trademark application for “Pen-Pineapple-apple-Pen”, which is the title of the popular song performed by Japanese comedian Pikotaro, for use in goods under class 3, 9, 14, 16, 18, 20, 21, 24, 25, 26, 28, 30, 32, and services under class 35, 41, 43 and 45. Avex’s application was granted on October 16, 2018 (Reg. No. 0194523, see below).
On November 18, 2020, Taiwan’s IP Office (“TIPO”) ruled in Avex’s favor, finding no violation of Trademark Act.
On
issue of similarity, TIPO finds “Pen-Pineapple-Apple-Pen” bears little
similarity with Apple’s “Apple” or “Apple Pencil”, because the opposed
trademark consists of words such as “pen”, “pineapple”, and “apple”, and would
be perceived as an expression of sentence. On the other hand, Apple’s logo
“Apple” refers to a specific fruit, and would be perceived as one single word.
Thus, the overall appearance, pronunciation, and concept of Avex’s trademark is
different from those of Apple’s opposing trademark. Apple argues that its
“Apple Pencil” should be found similar with “Pen-Pineapple-Apple-Pen”, for “pen”
is similar with “pencil”. TIPO is not persuaded. Rather, TIPO evaluates the
entirety of Avex’s “Pen-Pineapple-Apple-Pen”, and finds its structure so complex
that it is not likely for ordinary consumers to confuse it with Apple’s “Apple
Pencil.” Thus, the similarity between Avex’s and Apple’s trademarks is low.
As
to the designated use of goods or services, TIPO finds that some of them are
similar or associated with those designated by Apple’s opposing trademarks in
terms of their nature, function, or targeted customers (e.g., computer program,
application, earphone, headphone, watch, notebook, etc.), while others are
distinguishable (e.g., pet bed, dog house, perfume, tomato sauce, soy sauce, vinegar,
and shampoo).
While TIPO acknowledges the well-known
status of Apple’s “Apple” and “Apple Pencil”, TIPO is also aware of the recognizability
of Avex’s “Pen-Pineapple-Apple-Pen” due to the global success and popularity of
the brainwashing single. Hence, Avex’s “Pen-Pineapple-Apple-Pen” is distinctive
and consumers in Taiwan should be quite familiar with Avex’s trademark. Moreover,
with wide coverage of mainstream media like CNN, Time, BBC, and recognition of Guinness
World Records as the shortest but most popular single that charts the Billboard
Hot 100, TIPO notes that Avex’s “Pen-Pineapple-Apple-Pen” is already well-known
among the relevant public, and Avex would have no intent to imitate Apple’s
“Apple” or “Apple Pencil”. In short, it would be easy for ordinary consumers to
distinguish Avex’s “Pen-Pineapple-Apple-Pen” from Apple’s “Apple” or “Apple
Pencil”.
In view of the above, although some of
the designated goods of Avex’s opposed trademark are similar with those of
Apple’s well-known “Apple” and “Apple Pencil”, TIPO finds there should be no
likelihood of confusion or dilution given the low similarity between Apple’s
and Avex’s trademarks, and the fact that both trademarks are distinctive and quite
famous among the relevant consumers. As a result, Apple’s opposition was
denied.
Source:
Pikotaro's PPAP:
https://www.youtube.com/watch?v=NfuiB52K7X8
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