IP ENSight | 7 November 2018

Apple Smapple… it’s all very confusing!

by Tanith Robertson

In this article, we look at three recent trade mark decisions. These decisions illustrate some of the basic and fundamental principles of trade mark law, particularly with regard to the all-important question of when trade marks are confusingly similar. Principles such as the fact that it is the visual, phonetic and conceptual similarities or differences that must be considered, and that the descriptive elements of trade marks generally do not come into the equation. But the principle that these recent decisions perhaps illustrate best is the most important principle of all – the one that says that trade mark decisions are inconsistent, often counter-intuitive and, as a result, very difficult to predict.

Apple Smapple – a no-brainer, surely!

In a recent trade mark opposition case in Japan, the issue was this: should a Japanese company’s application to register the trade mark Smapple for mobile phones and devices, as well as repair and maintenance services related to these goods (classes 9 and 37), be refused on the basis of trade mark registrations for Apple? A fairly easy case you might think: the trade marks look and sound quite similar; apple is an English word that may not be known to many people in Japan; there is an obvious business and product overlap; and Apple is one of the best known brands in the world.

Yet, the Japanese Registry (Board) rejected Apple’s opposition, holding that the trade marks were not confusingly similar. It accepted that the Apple trade mark has a huge reputation and renown in the area of computers, phones and devices, but said that this reputation and renown does not extend to repair services. It said that it was relevant that the word “apple” is not a coined word but a common English word with a specific meaning. It held that the trade marks Apple and Smapple are visually, phonetically and conceptually distinguishable. It also rejected an interesting argument put forward by Apple, namely that the letters SM could basically be taken out of the equation. Why? Because, said Apple, these letters are likely to be understood as meaning “service mark”, so consumers will simply see Smapple as Service Mark Apple.

How do you like them apples? 

Sticking with apples, on 15 October 2018, the Court of Justice of the European Union (“CJEU”) handed down an interesting judgment in a long-running dispute. This case involved an application to register the trade mark Wild Pink for various foodstuffs like fruit, vegetables and flavorings (classes 29, 30 and 31). This application was opposed by an Australian apple growers’ body and a French distribution company. The basis of the opposition was that Wild Pink is confusingly similar to Pink Lady, a trade mark for which there are both EU registrations as well as country-specific registrations within the EU.
If you had asked a number of trade mark law specialists for an opinion on this matter, I suspect that a significant number of them would have said something like this: well, the word “pink” is purely descriptive and, therefore, non-distinctive, which means that it can pretty much be eliminated from the enquiry and the words “wild” and “lady” are totally different, so the trade marks are not confusingly similar. 

But that is not how the CJEU saw it. It accepted that the word “pink” is descriptive and non-distinctive in respect of fruit. But it still went to on find that that the earlier tribunal had been wrong in finding that, because of the descriptive nature of the common word, the trade marks are visually, phonetically and conceptually dissimilar. The reason? In each case, the trade mark has only two elements, and in neither case is the role of the word “pink” negligible. 

As part of its judgment the CJEU discussed language in some detail. It acknowledged earlier findings that the authorities are entitled to assume that English is understood in a number of EU countries including the Scandinavian countries, Finland and the Netherlands. But it said that there are certain English words that are so common that one can assume that they understood throughout the EU. Pink is seemingly such a word.

Dunhill v Danhuoli…hmmmm!

Dunhill, a company that is part of the luxury goods group Richemont, recently had a big win in China. Dunhill had sued a Chinese company that used the name Danhuoli for menswear. Dunhill v Danhuoli ... pretty similar, but perhaps not the most blatant and clear-cut copy!

But the kicker here was the manner in which the name Danhouli was used:

(image credit)

In the trade mark infringement and unfair competition case brought by Dunhill, the Chinese court had no doubt that there would be confusion and that the intention had been to cause confusion. The fact that the Chinese company also had a company in its group called Dunhill no doubt helped the court to come to this conclusion. The court awarded damages in excess of USD1-million. Of the three cases discussed, this is perhaps the only one where the outcome was predictable!

Reviewed by Gaelyn Scott, head of ENSafrica’s IP department. 


 

Tanith Robertson

IP | senior associate
trobertson@ENSafrica.com
cell: +27 72 608 6088

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