タグ: Apple Inc.

Trademark dispute: iTunes vs HiTune

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On May 1, 2023, the Japan Patent Office (JPO) dismissed an opposition filed by Apple Inc. against TM Reg no. 6536066 for the wordmark “HiTune” by finding dissimilarity to and an unlikelihood of confusion with “iTunes”.

[Opposition case no. 2022-900242]

Opposed mark

UGREEN GROUP LIMITED, a Chinese company, filed the wordmark “HiTune” (see below) for use on computer peripheral devices, data processors, earphones, headphones, microphones, sound transmitting apparatus, and other goods in class 9 with the JPO on November 10, 2021.

The mark was registered on March 29, 2022, without receiving any refusal in the course of the substantive examination taken place by the JPO.

UGREEN has promoted wireless stereo earphones/earbuds bearing the mark.

Opposition by Apple Inc.

On June 6, 2022, Apple Inc. filed an opposition to “HiTune” and contended that the opposed mark shall be canceled in contravention of Article 4(1)(xi) and (xv) of the Japan Trademark Law by citing earlier trademark registration nos. 4570713 “iTUNE”, 4610312 “ITUNES”, 5155781 “iTunes”, IR943547 “ITUNES” in class 9.

Article 4(1)(xi) is a provision to prohibit the registration of a junior mark that is identical with, or similar to, any senior registered mark.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entities’ well-known goods or services.

Apple Inc. argued that the mark “iTunes” has been famous as a source indicator of the opponent in relation to application software and multi-content distribution service. In view of the remarkable similarity between “HiTune” and “iTunes” by representing the second letter “i” in lower case and the third letter “T” in upper case, relevant consumers would associate the opposed mark with the opponent when used on goods of class 9 in question.

JPO decision

To my surprise, the JPO Opposition Board admitted a certain level of recognition of the mark “iTunes” as a source indicator of Apple Inc. in connection with application software enabling to download music or movies and to manage the contents among consumers of music distribution service, however, denied a substantial level of reputation and popularity of the opponent mark due to a lack of objective evidence produced to the Board.

In assessing the similarity of marks, the Board stated:

Differences such as the presence or absence of “H” at the beginning of the word, the difference between upper- and lower-case letters, and the presence or absence of “s” at the end of the word have a significant impact on the overall visual impression of both marks, which consist of relatively short letters. Therefore, the marks are clearly distinguishable from appearance.

There are distinctions between the sound “ha” and “a” at the beginning of a word, and the presence or absence of the sound “z” at the end of a word. These differences have a material effect on overall sounds given the relatively short sound structure. Therefore, there is less risk of mishearing each other when pronounced.

Since both marks do not give rise to any specific meanings, there is no room to cause confusion in concept.

If so, the Board has a reason to believe both marks are distinctively dissimilar.

Bearing in mind the Board finds that the opponent mark “iTunes” has not become famous among relevant consumers in Japan and has a low degree of similarity to the opposed mark “HiTune”, it is unlikely that the consumers confuse or misunderstand a source of goods in question bearing the opposed mark with Apple Inc. from the totality of the circumstances.

Based on the foregoing, the JPO decided the opposed mark shall not be canceled and dismissed the opposition entirely.

APPLE Unsuccessful in Trademark Opposition to “MACLOGIC”

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The Japan Patent Office (JPO) dismissed an opposition filed by the U.S. tech giant, Apple Inc. against trademark registration no. 6370191 for a word mark “MACLOGIC” due to dissimilarity to and less popularity of the “Mac” mark among general consumers as a source indicator of Apple’s personal computers.

[Opposition case no. 2021-900239, Gazette issued date: June 24, 2022]

MACLOGIC

The opposed mark, consisting of the word “Maclogic” in standard character, was filed in the name of MACLOGIC Co., Ltd., a Japanese company providing EC consulting services and SNS marketing.

The mark was filed with the JPO on December 24, 2020, and admitted registration on March 9, 2021, over computer programs in class 9 and computer software design, computer programming, or maintenance of computer software, providing computer programs on data networks in class 42.

Opposition by Apple Inc.

On June 21, 2021, Apple Inc. filed an opposition to “Maclogic” and contended that the opposed mark shall be canceled in contravention of Article 4(1)(x) and (xv) of the Japan Trademark Law.

Article 4(1)(xi) is a provision to refrain from registering a junior mark that is identical with, or similar to, any senior mark that has acquired a certain degree of recognition among relevant consumers.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entities’ well-known goods or services, to the benefit of brand owners and users.

Apple Inc. argued that the mark “Mac” has been famous as a source indicator of the opponent in relation to personal computers and their operating system. Being that relevant consumers consider the opposed mark as a composite mark composed of “Mac” and logic”, the term “Mac” per se shall be a prominent portion of the opposed mark.

If so, it is likely that relevant consumers confuse or misconceive the source of the opposed goods with Apple or any business entity systematically or economically connected with the opponent due to the high popularity of Apple’s “Mac” computers and the close resemblance between “Maclogic” and “Mac”.

Board decision

The Opposition Board found the “Mac” mark has acquired a certain degree of recognition among relevant consumers and trades in relation to personal computers and its operating system. However, to my surprise, the Board questioned if the mark has acquired a similar degree of popularity among general consumers.

Given the opponent mark has not been famous among general consumers, the Board found the opposed mark “Maclogic” in its entirety is dissimilar to the opponent mark “Mac” from visual, phonetical, and conceptual points of view.

Taking into consideration a low degree of similarity between the marks and popularity of Apple’s “Mac” mark, the Board had no reason to believe that consumers would mistakenly assume the opposed goods originate from the same source as or are associated with, the opponent when used on goods in question.

Based on the foregoing, the Board decided Apple’s opposition was groundless and dismissed the entire allegations.

“MACSELL” for use on PC value estimation service is unlikely to cause confusion with Apple “Mac”

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The Japan Patent Office (JPO) dismissed an opposition claimed by Apple Inc. against trademark registration no. 6223514 for word mark “MACSELL” on used mobile phone, Smartphone, PC and tablet computer value estimation service in class 36 by finding less likelihood of confusion with Apple “Mac” series.
 [Opposition case no. 2020-900114, Gazette issued date: Jan 29, 2021]

MACSELL

Opposed word mark “MACSELL” in standard character was filed on March 22, 2019, for the service of used mobile phone, Smartphone, PC and tablet computer value estimation, and others in class 36. Going through the substantive examination, the JPO admitted registration on February 6, 2020.

Apparently, the opposed mark is used as a tradename of used Mac and Surface recycle shop managed by the applicant.

Capture from “MACSELL” website
Capture from Google “Street View”

Apple’s Opposition

Apple Inc. argued the opposed mark “MACSELL” shall be canceled in violation of Article 4(1)(xv) of the Japan Trademark Law.

“Mac” has become famous as a source indicator of Apple’s PC by virtue of substantial use with various trademarks, e.g. “MacBook Air” and “MacBook Pro” on laptops, “iMac” and “iMac Pro” on desktops, “Mac Pro” and “Mac mini” on computer hardware.

The opposed mark, consisting of “MAC” and “SELL”, would easily give rise to a meaning of offering Apple’s PC for sale.

If so, relevant consumers at the sight of the opposed mark when used on the service in question are likely to associate and confuse the origin of the opposed mark with Apple Inc. or any entity related to the opponent.

JPO decision

The JPO Opposition Board admitted a remarkable degree of reputation and popularity of “Mac” as a source indicator of Apple Inc. and a close association between Apple’s goods and the service in question.

However, the Board found a low level of similarity between “MACSELL” and “Mac” by stating that the term “SELL” would severely cause a distinctive impression between both marks from visual, phonetical, and conceptual points of view, even if the marks share the word “MAC.”

Besides, taking into account a low level of originality of the opponent mark “Mac,” the Board questioned if relevant consumers and traders are likely to associate or connect the opposed mark with the opponent when used on the service in question.

Consequently, the Board held that relevant consumers would be unlikely to confuse the source of the opposed mark with Apple Inc. and any entity economically or systematically connected with the opponent.

Based on the foregoing, the Board decided to dismiss the opposition entirely and allowed registration of the opposed mark as status quo.

iPad vs MI PAD

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JPO sided with Apple Inc. in a dispute with a China-based consumer electronics company, Xiaomi that registers and uses the “MI PAD” trademark on tablet computers by finding that “MI PAD” is likely to cause confusion with “iPad”.
[Opposition case no. 2019-685002, Gazette issued date: November 27, 2020]

Xiaomi “MI PAD”

Xiaomi, a China-based electronics manufacturer headquartered in Beijing, filed a trademark application for word mark “MI PAD” via the Madrid Protocol (IR 1223839) in respect of various goods including table computers, downloadable music files, downloadable image files in class 9, and telecommunication access services and others in class 38 on August 22, 2017.

Prior to filing the application, Xiaomi newly introduced its first tablet, the Tegra K1-powered “Mi Pad” in 2014.

The JPO admitted registration of the MI PAD mark on December 7, 2018.

Opposition by Apple “iPad”

The Opponent, whose earlier ‘iPad’ trademark for its computer tablet products was also registered in Classes 9 and 38, is the U.S. tech giant, Apple Inc.

The heart of this dispute concerned the grounds of opposition raised by Apple Inc. against Xiaomi’s ‘MI PAD’ mark registration in Japan under Article 4(1)(xv) of the Japan Trademark Law.

Article 4(1)(xv) is a provision to prohibit any mark from registering if it is likely to cause confusion with other business entities ’ well-known goods or services.

The Opponent argued the “MI PAD” mark shall cause confusion with Apple “iPad” when used tablet computers and related goods and services, given a remarkable reputation of “iPad” holding a top market share (42% in 2017, 43.2% 2018) in Japan and the close resemblance between “iPad” and “MI PAD”.

JPO decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “iPad” based on the produced evidence boasting the top market share consecutively for the past nine years in Japan. Besides, the Board found “iPad”, consisting of “i” and “Pad”, is highly unique because the term “Pad” is anything but descriptive in relation to tablet computers.

In the assessment of mark, the Board held the dissimilarity between the signs at issue, resulting from the presence of the additional letter ‘m’ at the beginning of “MI PAD”, is not sufficient to offset the high degree of visual and phonetic similarity between the two signs. It is unquestionable that the designated goods and services are closely associated with tablet computers and consumed by the same consumers.

If so, it is likely that the consumers at the sight of disputed goods and services bearing the “MI PAD” mark would confuse or misconceive its source with Apple Inc. or any entity systematically or economically connected with the opponent.

Based on the foregoing, the Board decided opposed mark shall be canceled in contravention of Article 4(1)(xv).

Japan IP High Court sided with Apple Inc. in “CORE ML” trademark dispute

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On May 20, 2020, the Japan IP High Court denied the JPO decision and sided with Apple Inc. by finding the “CORE ML” mark is dissimilar to senior trademark registration no. 5611369 for word mark “CORE” in connection with computer software of class 9.
[Case no. Reiwa1(Gyo-ke)10151]

CORE ML

Apple Inc. filed a trademark application for word mark “CORE ML” in standard character by designating computer software in class 9 on November 6, 2017 (TM App no. 2017-145606).

Apple’s Core ML is its own framework for Machine Learning used across Apple products for performing fast prediction or inference with easy integration of pre-trained machine learning models on the edge, which allows you to perform real-time predictions of live images or video on the device.

JPO decision

The Japan Patent Office (JPO) rejected “CORE ML” in contravention of Article 4(1)(xi) of the Trademark Law due to a conflict with senior trademark registration no. 5611369 for word mark “CORE” in standard character over electronic machines, computer software, and other goods in class 9 owned by Seiko Holdings Corporation.

Article 4(1)(xi) is a provision to prohibit from registering a junior mark that is deemed identical with, or similar to, any senior registered mark.

In the decision, the JPO stated applied mark apparently consists of two words, “CORE” and “ML”. The term “CORE”, a familiar English word meaning ‘a central and foundational part’, would play a role of source indicator in connection with the goods in question. In the meantime, “ML” is a descriptive term since it is commonly used as an abbreviation of ‘Machine Learning’ in the computer software industry. If so, it is permissible to select the term “CORE” as a dominant portion of applied mark and compare it with the cited mark “CORE”.

To contend against the decision, Apple Inc. filed an appeal to the IP High Court.

IP High Court ruling

The IP High Court, at the outset, referred to the Supreme Court ruling in 2008 which established the criterion to grasp a composite mark in its entirety in the assessment of similarity of the mark.

“Where a mark in dispute is recognized as a composite mark consisting of two elements or more, it is not permissible to assess the similarity of mark simply by means of taking out an element of the composite mark and then comparing such element with the other mark, unless consumers or traders are likely to perceive the element as a dominant portion indicating its source of origin of goods/service, or remaining elements truly lack inherent distinctiveness as a source indicator in view of sound and concept.”

Based on the criteria, the court found that applied mark shall be assessed in its entirety on the following grounds:

  1. “CORE” would be merely recognized as a term to mean ‘a central and foundational part’ in connection with goods in question.
  2. It is unlikely that relevant consumers at the sight of “CORE ML” used on computer software conceive the term “ML” as an abbreviation of ‘machine learning’. If so, “ML” would not give rise to any specific meaning.
  3. The above facts suggest that “CORE” would never play a dominant role and “ML” shall not be considered less distinctive than “CORE” as a source indicator in view of the concept.
  4. From appearance and sound, there is no reasonable ground to believe “CORE” and “ML” shall be recognized individual and separable.

Based on the foregoing, the court pointed out the JPO erred in finding applied mark appropriately and decided that the applied mark “CORE ML” is deemed dissimilar to the cited mark “CORE” as a whole given the remarkable difference in sound and appearance, even if both marks resemble in concept.

SWATCH Defeated in SWATCH vs iWATCH Trademark Dispute

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The Trial Board of Japan Patent Office (JPO) dismissed an invalidation petition by Swiss watch giant, Swatch against TM Reg. no. 5849925 for word mark “iWATCH” owned by U.S. tech giant, Apple Inc.
[Invalidation case no. 2017-890071, Gazette issue date: January 31,2020]

iWATCH

Disputed mark, consisting of a word “iWATCH” in plain block letters (see below), was applied for registration in the name of Apple Inc. on April 25, 2014 in respect of watches, clocks and other goods in class 14.

Immediately after registration on May 13, 2016, Swatch filed an opposition to challenge registrability of disputed mark based on Article 3(1)(iii), 3(1)(vi), 4(1)(xi), 4(1)(xv), 4(1)(xvi) of the Japan Trademark Law, but in vain. [Opposition case no. 2016-900234]

Article 3(1)(iii) is a provision to prohibit any mark from registering where the mark solely consists of elements just to indicate, in a common manner, the place of origin, place of sale, quality, materials, efficacy, intended purpose, quantity, shape (including shape of packages), price, the method or time of production or use.

Article 3(1)(vi) is a comprehensive provision to prohibit any mark lacking inherent distinctiveness from being registered.

Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and users’ benefits.

Article 4(1)(xvi) is a provision to prohibit registration of any mark likely to mislead quality of goods or services.

Invalidation Trial

Japan Trademark Law provides a provision to retroactively invalidate trademark registration for specific grounds under Article 46 (1).

In an effort to argue against the opposition decision, Swatch filed a petition for invalidation against disputed mark on October 23, 2017. Swatch argued disputed mark “iWATCH” shall be invalid because of following reasons:

  1. Given disputed mark consists of an alphabet letter “i” and a generic term in relation to a designated goods ‘watch’, the mark can be merely perceived to indicate a value, code, type, mode or standard of ‘watch’. If so, disputed mark shall be lack of distinctiveness and revocable under Article 3(1)(vi) in relation to the goods.
  2. Likewise, relevant consumers would misconceive quality of goods when disputed mark is used on goods other than ‘watch’ in class 14, e.g. jewelry, key holders, jewelry boxes, accessories. If so, disputed mark shall be revocable under Article 4(1)(xvi) in relation to goods other than ‘watch’.
  3. Disputed mark “iWATCH” resembles “SWATCH” from visual and phonetic points of view. It is unquestionable SWATCH has become remarkably famous for watches and fashion items of Swatch Group. If so, a likelihood of confusion will arise between “iWATCH” and “SWATCH” when disputed mark is used on goods in class 14. Thus, disputed mark is revocable under Article 4(1)(xi).

Board Decision

In the decision, the Board sided with Apple Inc. and found that:

  • The Board considers the term “iWATCH” is a coined word in its entirety which does not give rise to any specific meaning at all. Therefore, it is unlikely that relevant consumers conceive disputed mark just as a qualitative indication of goods in question.
  • The Board admits “SWATCH” has been acquired a high degree of reputation and popularity among relevant consumers and traders as famous watch of Swatch Group. In the meantime, the term appears less unique and creative since it is a dictionary word meaning ‘a sample piece (as of fabric) or a collection of samples’.
  • Difference on initial letter of both marks shall not be negligible on the case. The Board has no good reason to believe both marks are deemed similar from visual, phonetic and conceptual points of view.
  • If so, it is unlikely to happen that relevant consumers with an ordinary care would associate or misconceive disputed mark with Swatch or any entity systematically or economically connected with claimant even when used on ‘watch’.

Based on the foregoing, the Board concluded “iWATCH” shall be irrevocable in relation to “SWATCH” and dismissed Swatch’s invalidation petition wholly.

Failed Opposition by Apple against trademark registration “EYE PHONE”

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by the U.S. tech giant, Apple Inc. against trademark registration no. 6099794 for word mark “EYE PHONE” in class 9 by finding less likelihood of confusion with Apple “iPhone”.
[Opposition case no. 2019-900030, Gazette issue date: September 27, 2019]

“EYE PHONE”

Opposed mark, a word mark “EYE PHONE” in standard character, was filed by a Japanese business entity, NOVELTY EYE-WEAR Inc., on February 26, 2018 by designating ‘spectacles [eyeglasses and goggles]’ in class 9.

The JPO admitted registration on November 22, 2018 and published for registration on December 18, 2018.

APPLE’s Opposition

To oppose against registration within a statutory period of two months counting from the publication date, Apple Inc. filed an opposition on January 28, 2019.

In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(vii), (xv) and (xix) of the Japan Trademark Law given a remarkable reputation of opponent mark “iPhone” to indicate opponent’s smart phones currently holding a 44.1% market share in Japan and close resemblance between “iPhone” and “EYE PHONE”.

Apple Inc. argued opposed mark “EYE PHONE” has the same pronunciation with “iPhone” and gives a similar impression in appearance. If so, both marks shall be confusingly similar. Besides, the goods in question are closely related to smart phones since smartphone users get to wear specific glasses for smartphone to block blue light. Recently, smart glasses, wearable device that brings with suitable technology a computer screen/display in front of a person’s eye, have become a hot topic.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and consumers.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “iPhone” in connection with smart phones based on the produced evidences boasting the top market share consecutively for the past seven years in Japan.

Meanwhile, the Board found a low degree of originality of “iPhone” given a combination of alphabetical letter “i” and descriptive term “Phone” in relation to smartphones.

In the assessment of mark, the Board held “EYE PHONE” and “iPhone” are dissimilar even if both marks have the same pronunciation since they are sufficiently distinguishable from visual and conceptual point of view. Also, the Board negated close relation between glasses and smartphones in view of its nature, purpose, usage, distribution channel and consumers.

If so, it is unlikely that the consumers confuse or misconceive a source of opposed mark with Apple Inc. or any entity systematically or economically connected with opponent.

Based on the foregoing, the Board decided opposed mark shall not be cancelled on the grounds of Article 4(1)(vii), (xv) and (xix).

Trademark Opposition: “iPhone” versus “SAIPHONE”

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The Japan Patent Office (JPO) dismissed a trademark opposition claimed by the U.S. tech giant, Apple Inc. against trademark registration no. 6060316 for word mark “SAIPHONE” in class 9 and 18 by finding less likelihood of confusion with Apple “iPhone”.
[Opposition case no. 2018-900255]

“SAIPHONE”

Opposed mark, a word mark “SAIPHONE” in standard character, was filed by a Japanese business entity, STYLE Corporation, on September 28, 2017 by designating ‘mobile phones, smart phones, and its accessories, namely cases, covers and hands-free holders’ in class 9, and ‘purses and wallets, commutation-ticket holders, business card cases, bags and pouches, umbrellas, industrial packaging containers of leather’ in class 25.

STYLE Corporation promotes the “SAIPHONE” leather cases for iPhone (see below).

The JPO admitted registration on June 22, 2018 and published for registration on July 6, 2018.

APPLE’s Opposition

To oppose against registration within a statutory period of two months counting from the publication date, Apple Inc. with AIPHONE Co., Ltd., as a joint claimant, filed an opposition on September 7, 2018.

In the opposition brief, Apple Inc. asserted the opposed mark shall be cancelled in violation of Article 4(1)(xi) and (xv) of the Japan Trademark Law given a remarkable reputation of opponent mark “iPhone” in the business field of smart phones and similarity to a senior trademark registration no. 5147866 for the word mark “iPhone” in standard character over mobile phones in class 9 effective since 2008.

Interestingly, “iPhone” is indeed a registered trademark owned by AIPHONE Co., Ltd. in Japan. Apple Inc. is an exclusive licensee of the mark.

Apple Inc. argued opposed mark “SAIPHONE” gives rise to a confusingly similar pronunciation and appearance to “iPhone”, since opposed mark contains a famous mark “iPhone” entirely and a mere difference on prefix “SA” is insufficient for relevant consumers anything but to conceive “iPhone” from opposed mark.

Article 4(1)(xi) is a provision to refrain from registering a junior mark which is deemed identical with, or similar to, any senior registered mark.

Article 4(1)(xv) provides that a mark shall not be registered where it is likely to cause confusion with other business entity’s well-known goods or services, to the benefit of brand owner and consumers.

Board Decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “Apple” in connection with smart phones based on the produced evidences showing a more than 40% share of the market in Japan.

In the meantime, the Board found “SAIPHONE” and “iPhone” are totally dissimilar since they are sufficiently distinguishable in visual, phonetic, and conceptual point of view.
A fact that opposed mark contains “iPhone” is not persuasive on the case since relevant consumers with an ordinary case would see opposed mark in its entirety.
If so, it is likely that the consumers confuse or misconceive a source of the opposed mark with Apple Inc. or any entity systematically or economically connected with the opponent.

Based on the foregoing, the Board decided the opposed mark shall not be cancelled on the grounds of Article 4(1)(xi) as well as (xv).