An Aussie company has triumphed in a legal wrangle with computer giant Apple Inc over registration of its trade mark DOPI. Despite Wholesale Central Pty Ltd’s trade mark, being the reverse of the famous Apple iPod® trade mark and placing emphasis on the letter “i”, the DOPI trade mark was not found to be deceptively similar to the iPod® mark.
In a hearing before the Registrar’s Delegate, Apple objected to registration of the DOPI trade mark for use on various carry bags and accessories for digital devices including its own iPhone® products, MacBook® computers and iPod® devices.
Citing its various other trade marks registrations combining the prefix “i” with another word such as, iTunes®, iMac®, iLife®, iWork® and iPhone®, Apple argued it had a family of “i” marks and that use of the DOPI trade mark with this emphasis on the letter “i” was likely to deceive or cause confusion. Apple also alleged Wholesale Central had piggy backed on the fame of its iPod® mark and the association implicit in the use of “i” in the industry, and that this should lead to a finding that the trade marks were deceptively similar.
In a hearing before the Registrar’s Delegate, Apple objected to registration of the DOPI trade mark for use on various carry bags and accessories for digital devices including its own iPhone® products, MacBook® computers and iPod® devices.
Citing its various other trade marks registrations combining the prefix “i” with another word such as, iTunes®, iMac®, iLife®, iWork® and iPhone®, Apple argued it had a family of “i” marks and that use of the DOPI trade mark with this emphasis on the letter “i” was likely to deceive or cause confusion. Apple also alleged Wholesale Central had piggy backed on the fame of its iPod® mark and the association implicit in the use of “i” in the industry, and that this should lead to a finding that the trade marks were deceptively similar.
However, the Hearing Officer disagreed, drawing on the numerous trade marks on the Australian Register and his own knowledge of the technology industry to support his view that Apple did not have a monopoly in trade marks comprising the prefix “i” and another word. He did not consider the fact Wholesale Central’s trade mark ended in the letter “i”, or use of a trade mark which was the iPod® trade mark in reverse order to give rise to deception or confusion. The absence of any evidence of actual confusion despite Wholesale Central’s sale of items including covers for Apple’s iPod® players under the DOPI trade mark since January 2007 also suggested no deception or confusion was likely to arise.
Apple, citing the case of Registrar of Trade Marks v Woolworths Ltd (1999) 45 IPR 411 (“the Woolworths’ case”), also tried to argue that the assessment of deceptive similarity should take into account its reputation in the iPod® mark as it had “a degree of notoriety or familiarity of which judicial notice can be taken”.
By analogy with the Woolworths’ case, where WOOLWORTHS METRO and METRO were not found deceptively similar because of the “notorious familiarity” of WOOLWORTHS, the Hearing Officer considered the “ubiquitous nature” of the iPod® mark tended to lessen the likelihood of deception or confusion arising with the DOPI trade mark.
Dismissing the opposition, the Hearing Officer found the “coincidental similarity” between the trade marks was not sufficient for them to be deceptively similar. Consequently, the DOPI trade mark is now registered. This decision could be said to create an “i-opening” for other traders who may seek to register trade marks beginning or ending with the prefix “i” for digital devices and accessories.
Apple’s POD protection
In another recent development, Apple Inc has settled a potential Federal Court stoush over registration of the Australian trade mark POD.
Apple had appealed the Trade Mark Registrar’s earlier decision to refuse registration of the POD trade mark after Line 6, Inc argued it had superior rights to the trade mark by virtue of its use of the mark in Australia since 1999 and its prior trade mark registration.
Line 6, Inc had used the POD trade mark for electronic devices which take signals from electrical guitars and digitally process the signal to modify the sound. Bands such as Silverchair had used Line 6’s POD product and Line 6 was found to have a significant reputation in the trade mark in Australia. The Hearing Officer found Line 6’s opposition successful on a number of grounds including s.44 and s.60. The Hearing Officer also found Apple had established the s.59 ground of opposition, and that it did not have an intention to use the trade mark, but had filed the application for strategic purposes.
The appeal has been settled and Apple’s trade mark is now registered albeit for goods which now exclude those which could be said to conflict with Line 6 Inc’s goods of interest.