What comes to mind when you see a brand name beginning with a lower case “i”? Perhaps a certain piece of fruit? It certainly does for me.
Apple has recently succeeded in defeating renowned Swiss manufacturer Swatch’s trade mark application for the word i POP covering watches and jewellery. Apple claimed that the trade mark i POP is similar to its own trade mark registrations for IPOD that cover similar goods and that New Zealand consumers would be confused on seeing i POP branded products as to whether they were Apple products, or whether there was an association between Swatch and Apple.
Apple own a family of trade marks in New Zealand with the pre-fix “i”, including the IPOD marks. In Apple’s opinion, “consumers worldwide and in New Zealand are familiar with Apple’s I-prefix family of marks, especially the marks iPod, iPhone and iPad used in connection with Apple’s iconic and world famous portable digital devices”. Since the launch of the iMac personal computer in 1998, Apple has continued to brand its devices using this convention. Interestingly, Apple does not have a trade mark registration for “iWatch” as it faced issues securing rights to this brand name in other countries. Instead, Apple branded its watch the “Apple Watch”. Despite this, Apple submitted that prior to the introduction of the Apple Watch, media referred to the watch as the iWatch and that they continue to do so leading consumers to associate the brand naming convention with Apple’s watch device.
In deciding whether to allow the registration of Swatch’s i POP application, the Assistant Commissioner looked carefully at the similarities and differences between the trade mark i POP and Apple’s IPOD trade marks. She concluded that the general impression of consumers would be that the marks are similar. She saw the words “Pop” and “pod” as similar in both in how they look and sound, i.e they are both “catchy” words. The subtle differences between the form of the marks (i.e the space between the “i” and “pop” and the use of capital or lower case “I”) were not considered by the Commissioner to be sufficient to differentiate the marks.
Ultimately, the Assistant Commissioner found that a consumer who saw i POP products may well wonder whether there was some connection between Swatch’s watches and Apple’s brand. Other consumers are likely to just assume that a connection exists. Confusion was seen as a realistic possibility given the range of devices that Apple sells and the goods that Swatch sells (watches).
Apple’s success in this case should not be understood as a sword to defeat any trade mark application by another party that begins with the letter “I”. Apple is not the only user of the i-prefix in New Zealand e.g iNews. In fact, Swatch itself has been selling watches under the brand in New Zealand since 2012 and Swatch successfully registered the trade mark ISWATCH in New Zealand in August. Swatch has also registered I POP SWATCH in New Zealand.
At no point in the judgment did the Assistant Commissioner acknowledge that Apple had exclusive rights to any brand name with an i-prefix. Instead of acting as an indicator of the Apple brand, the “i” prefix was seen as a “hint at some sort of internet functionality”. This is consistent with the Intellectual Property Office of New Zealand’s Practice Guidelines which note that “the initialism of “i” or “I” … is commonly used as a prefix to indicate goods or services that are provided through the internet, for example ‘i-banking’, ‘i-music’ and ‘i-magazine’.
So while there is some scope for businesses other than Apple to secure trade mark registration for brand names beginning with an “i”, caution should be taken where the trade mark as a whole could be seen as similar to any of the Apple trade marks and where the goods or services being marketed under that brand name could be seen as similar to any one of Apple’s many devices.
The full judgment is available here: http://www.nzlii.org/nz/cases/NZIPOTM/2016/20.html.