12 March 2010

Apple - gone much too far

Apple Pty Limited ABN 46 002 510 054 uses a number of law firms in Australia, including Clayton Utz. CU acted for Apple in the matter I discuss here, where Apple lost, with costs against it.

Common sense and the law prevailed against Apple in a recent trade mark decision.  In Opposition by Apple Inc to registration of trade mark application 1162904 (9) filed in the name of Wholesale Central Pty Ltd Apple Inc opposed the registration of the trademark (actually an image)
dopi
in Class 9. This class covers general computer accessories, mp3 players and accessories and other goods.

dopi is, of course, ipod spelled backwards. That of itself tells you that this company and its products are not related to Apple Inc. Would you buy a router from ocsic? Would you buy a car from drof? For goodness sake, Apple, wake up. Having said that, the Applicant had a pretty dodgy explanation for the name: "Digital Options and Personalised Items." Good luck with that.

For some reason, Apple listed twelve grounds in the Notice of opposition, but only relied on sections 44 and 60 at the hearing. This means that the trade mark applicant had to spend time dealing with the other, redundant, matters, yet they were not pressed.

Apple's first argument was that dopi was deceptively similar to iPod. The Delegate politely dealt with this argument. I will deal with it thus: ha ha ha ha ha ha.

By way of intermission, I note that Apple has also registered the very attractive trade mark "IPODCAST".

The Delegate said in para 27 that Apple's counsel's analysis in relation to piggybacking on the letter "i" was "flawed." He noted that Apple had not led evidence about associated marks such as "iMac." He noted that there are "scores of parties" with marks such as IBOX, iPort, iJOG, IWAKE, IVISION and iDrive.

What led to my hilarity about this application by Apple Inc was the fact, noted by the Delegate in para 28, that Apple itself markets third party products on its own web sites at www.apple.com and www.apple.com.au (amongst many others) with names such as iSkin, iClear and iSee!! He went on to note that he has personally owned Apple products for many years and purchased associated magazines which advertise products such as iSkin, iTalk and iMic.

So, another note about the evidence... Counsel for the Applicant (the dopi people) noted that Apple had not produced any evidence of actual confusion or deception, despite having had months to do so.

So Apple was left with the last of its "twelve" arguments - s 60 - the Trade Mark is similar to a trade mark that has acquired a reputation in Australia.

Let's see...   iPod    v    dopi

Hmmm....

Again, the Delegate gave a much more polite response than me.

So, Apple Pty Limited lost. Costs were awarded against Apple. Good result.

Apple does not own the letter "i".