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A Prefix Can Fix – Apple’s iPad v Xiaomi’s MI PAD

A clash between two tech giants before the Intellectual Property Office of Singapore (IPOS), Apple Inc. v Xiaomi Singapore Pte Ltd [2017] SGIPOS 10, ended when the ruling favored Xiaomi (“the Applicant”) to register the mark ‘MI PAD’ for its computer tablet products in the face of a move from Apple Inc. (“the Opponent”), the developer of ‘IPAD’, to block its trademark registration.

The Applicant, a wholly owned subsidiary of Xiaomi Inc. (a Chinese electronics company founded on 6 April 2010), had applied to register the device mark ‘MI PAD’ in Singapore on 9 April 2014 in respect of goods and services in Classes 9 and 38. The ‘MI PAD’ tablet was introduced into the Singaporean market on 10 February 2015.

The Opponent, whose earlier ‘IPAD’ trademark for its computer tablet products was also registered in Classes 09 and 38 of the Classification of Goods and Services, is the world’s leading manufacturer of mobile communication and media devices. Its computer tablet mark ‘IPAD’ was registered as a trademark in Singapore since 2010.

The heart of this dispute concerned the grounds of opposition raised by the Opponent against the Applicant’s ‘MI PAD’ mark registration in Singapore under the following sections of the Trade Marks Act (Cap 332, 2005 Rev Ed):

*Section 8(2)(b) which states that a trade mark shall not be registered if because it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public.

*Section 8(4)(b)(i) which states that a trade mark shall not be registered, if the whole or an essential part of the trade mark is identical with or similar to an earlier trade mark which is well-known in Singapore and where use of the later trade mark in relation to the goods or services for which the later trade mark is sought to be registered, would indicate a connection between those goods or services and the proprietor of the earlier trade mark, and is likely to damage the interests of the proprietor of the earlier trade mark.

*Section 8(4)(b)(ii) which states that a trade mark shall not be registered if the whole or an essential part of the trade mark is identical with or similar to an earlier trade mark which is well known to the public at large in Singapore, and where the registration of the later trademark (MI PAD) would cause dilution in an unfair manner of the distinctive character of the earlier trademark and/or take unfair advantage of the distinctive character of the earlier trademark.

*Section 8(7)(a) which states that a trade mark shall not be registered if its use in Singapore would be contrary to the law of passing off; and

*Section 7(6) which states that a trademark shall not be registered if or to the extent that the application is made in bad faith.

IPOS’ Assistant Registrar of Trademarks Tan Mei Lin dismissed all the above-mentioned five grounds of opposition from Apple against the registration of ‘MI PAD’. Tan Mei Lin found that the rival marks were not similar in their totality.

Concerning the ground under Section 8(2)(b), the Registrar found that the word ‘PAD’ in itself is less likely to be associated with the concerned parties, with the word “PAD” being a general term used for tablet computers with “mobile operating system and LCD touchscreen display in a single thin, flat package.” As a descriptive word for tablet computers in general, the word ‘PAD’ is less likely to be the distinctive element of the marks in question. For the earlier mark, it is the prefix ‘I’.

Even though all the letters of the ‘IPAD’ mark are also found in the ‘MI PAD’ mark, the Registrar ruled that this has no impact on the distinctiveness of the earlier mark. The earlier mark’s prefix ‘I’ in the ‘IPAD’ mark is used in almost all of Apple products’ range of marks, wherein the prefix ‘I’ is combined to the general and descriptive terms of their products like ‘phone’ and ‘pod’ to form new and invented words that are unique in their own, thus, making it very unlikely for the mark ‘MI PAD’ to be confused with ‘IPAD’ since consumers can easily differentiate the word ‘MI’ in Xiaomi’s tablet mark from Apple’s prefix ‘I’.   Thus, with regard to the issue of damaging the Opponent’s commercial interests in respect of its ‘IPAD’ mark, which was raised against the Applicant’s mark under Section 8(4)(b)(i), IPOS maintained that “there was no reasonable likelihood of confusion arising.”

The ground under Section 8(4)(b)(ii) was also dismissed, as the Opponent failed to discharge its burden of showing that the earlier mark was well known to the public at large in Singapore. Too little evidence was furnished upon the Registrar for her to consider the mark’s distinctive character in this regard.

On the ground under Section 8(7)(a), the Opponent argued that Xiaomi’s computer tablet was highly similar to their IPAD in terms of size, product design, and user interface. However, the Registrar held that “in opposition proceedings, misrepresentation leading to deception and confusion must stem from the use of the trademark and not matters extraneous to the Mark.” Therefore, this ground also failed and that there was no misrepresentation on behalf of the MI PAD mark.

Finally, the Opponent’s ground of opposition under Section 7(6), that the MI PAD application was made in bad faith, also failed given the lack of “substantial identity” of the marks in question – the Registrar had already ruled that the two marks are “more dissimilar than similar.”

By Denise Mirandah and Divya Easwaran

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