Apple prevailed in trademark opposition for its “Pages” App icon

On August 29, 2024, Taiwan’s IP Office (“TIPO”) granted Apple Inc.’s (“Apple”) request to cancel trademark no. 02287852, finding the registered trademark is too similar with Apple’s registered icons for its “Pages” App (no. 01709495, and no. 01970147, see below).

 

The disputed trademark (no. 02287852, see below) was filed by BEIJING XIPULIN TRADING CO. LTD (“XIPULIN”) on July 1, 2022, and granted on April 1, 2023, designated for use in goods under class 9, such as laptop, computer software, computer hardware, downloadable mobile phone application, tablet computer, smartphones, headphones, cameras, etc. Apple filed opposition on June 30, 2023, alleging violations of Article 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

 

On August 20, 2024, TIPO found in Apple’s favor based on Article 30.1.10 of Trademark Act:

1.      Article 30.1.10 of Trademark Act provides that a mark shall not be registered if such a mark is “identical with or similar to another person’s registered trademark or earlier filed trademark and to be applied for goods or services identical with or similar to those for which the registered trademark is protected or the earlier filed trademark is designated, and hence there exists a likelihood of confusion on relevant consumers”.

2.      On similarity, TIPO notes that both XIPULIN’s and Apple’s trademarks feature a pen of white color, a square of yellow or orange color that encircles the pen, and the tip of the pen is headed toward lower-left of such square. While XIPULIN argued that in its trademark the pen is thicker, has no pen cap, and the page is flipping, TIPO posits that such variations are insufficient to create distinction from Apple’s icon. TIPO considers ordinary consumers would find XIPULIN’s and Apple’s trademarks visually and conceptually similar with each other.

3.      As to the designated use of goods, TIPO also finds the two trademarks are used for similar products. For example, Apple’s no. 01709495 trademark is applied for use in computer, disk, internet equipment, light pen, computer software, etc., and Apple’s no. 01970147 is applied for use in laptop, computer, mobile phone, smart watch, etc. These products are of similar nature, function, and share related purposes with the products designated by XIPULIN’s trademark.

4.      TIPO further notes that Apple’s aforesaid trademarks are highly distinctive, and have been well recognized by the relevant consumers due to its popular “Pages” app. The “Pages” app was first released to Apple’s user in 2013, and made available for other non-Apple users since 2015 for free. Based on the records of news reports and media coverages, TIPO is convinced that Apple’s cited trademarks are more famous and consumers are more familiar with these trademarks.

5.      In view of the above, considering the high similarity between XIPULIN’s and Apple’s trademarks, the similarity between the designated use of goods, the fact that Apple’s trademarks are highly distinctive and have established great recognizability among the relevant consumers, TIPO concludes that the registration of XIPULIN’s trademark may cause confusion with Apple’s above cited trademarks.

Accordingly, TIPO determines that the disputed trademark shall be canceled per Article 30.1.10 of Trademark Act.

Source: https://cloud.tipo.gov.tw/S282/OS0/OS0401_SCN3.jsp?issueNo=XpJ13RyT4bndMSHFRbGJlL3ZLaDlDWXd0YXZGZz09&l6=zh_TW&isReadBulletinen_US=&isReadBulletinzh_TW=true