Apple Inc. filed Israel Trademark Application Numbers 261449 and 261500 for IPAD MINI and IPAD AIR in November 2015. The marks cover Handheld mobile digital electronic device comprising a tablet computer, electronic book and periodical reader, digital audio and video player, camera, electronic personal organizer, personal digital assistant, electronic calendar, and mapping and global positioning system (GPS) device, and capable of providing access to the Internet and sending, receiving, and storing messages and other data in class 9.
Xiaomi Singapore Pte LTD filed Israel Trademark Application Numbers 270078 for
MI PAD in May 2015 for Portable and handheld electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data, including via global computer networks, wireless networks, and electronic communications networks; tablet computers, electronic book readers, periodical readers, digital audio and video players, digital camera, electronic personal organizers, personal digital assistants, electronic calendars, mapping and global positioning system (GPS) devices; computer peripheral devices; computer and portable and handheld electronic device accessories, namely, monitors, displays, keyboards, mouse, wires, cables, modems, disk drives, adapters, adapter cards, cable connectors, plug-in connectors, electrical power connectors, docking stations, charging stations, drivers, battery chargers, battery packs, memory cards and memory card readers, headphones and earphones, speakers, microphones, and headsets, cases, covers, and stands for portable and handheld electronic devices and computers; computer software for the development of content and service delivery across global computer networks, wireless networks, and electronic communications networks; downloadable audio works, visual works, audiovisual works and electronic publications featuring books, magazines, newspapers, periodicals, newsletters, journals and manuals on a variety of topics; computer software for transmitting, sharing, receiving, downloading, displaying, transferring, formatting, and converting content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works via portable electronic devices and computers; computer game programs; downloadable music files; downloadable image files; video telephones; navigational instruments; screens [photoengraving] in class 9, and for Telecommunication access services; communication by computer; transmission of data and of information by electronic means, broadcasting or transmission of radio and television programs; provision of telecommunications connections to computer databases and the Internet; electronic transmission of streamed and downloadable audio and video files via computer and other communications networks; web casting services; delivery of messages by electronic transmission; streaming of video content, streaming and subscription audio broadcasting of spoken word, music, concerts, and radio programs, broadcasting prerecorded videos featuring music and entertainment, television programs, motion pictures, news, sports, games, cultural events, and entertainment-related programs of all kinds, via computer and other communications networks; providing on-line bulletin boards for the transmission of messages among computer users concerning entertainment in the nature of music, concerts, videos, radio, television, film, news, sports, games and cultural events; communication services, namely, providing users access to communication networks for the transfer of music, video and audio recordings; teleconferencing services; providing Internet chatrooms; voice mail services; transmission of digital files in class 38.
Since Apple’s marks had not yet issued, and due to the apparent similarity between the marks and the goods, a competing marks procedure under section 30 of the Trademark Ordinance ensued.
In competing marks procedures some weight is given to the first to file, but the extent of use and equitable behavior are generally more important.
In this instance, Apple also has issued trademark numbers 226418, 226421, 226419 for IPAD and the Examiner considered that Xiaomi Singapore Pte LTD.’s application was confusingly similar to these as well.
Both sides were invited to produce evidence supporting their claims, and oddly, Apple submitted an affidavit from Thomas R. La Perle, the legal counsel of Xiaomi! Xiaomi did not submit evidence at this stage.
A hearing was scheduled for 1 February 2016, and then cancelled. The Israel Trademark Office therefore has ruled on which mark should proceed to examination, based on the evidence submitted and the response to the office action from Xiaomi against the issued Apple marks.
Apple claims that the IPAD was launched in 2010. The smaller IPAD MINI and IPAD AIR models were launched in 2012 and 2013 and the marks were widely registered. Apple spent over a billion dollars in promoting the devices in 2014 and had sales exceeding 70 billion dollars. Apple further claims that MIPAD is confusingly similar to IPAD, with the difference between IPAD and MIPAD being one letter. The products are confusingly similar. In Israel there is no Apple Store, so the distribution channels are similar.
Xiaomi claims that MI means rice in Chinese and virtually all Xiaomi’s products include the term MI since rice is part of the corporation’s family [I don’t understand what this means, either, and suspect that they are trying to claim that they started as a rice distributor and branched out into other areas. The point of the argument is that they are not trying to free ride on Apple’s reputation and are arguing that any similarity is coincidental and not evidence of bad faith – MF].
Oddly, at the evidence stage, Apple submitted an affidavit from Thomas R. La Perle, the CEO of Xiaomi. Xiaomi did not submit evidence and a scheduled hearing was cancelled, and the Deputy Commissioner ruled based on the evidence including Xiaomi’s argument in response to the office action claiming similarity to issued Apple marks for IPAD.
Xiaomi argued that IPADs marks were combinations of descriptive elements. They submitted evidence of advertising and sales in Asia and elsewhere but this did not focus on tablets and so was given little evidentiary weight.
Xiaomi also showed that their MI mark was registered, but this was considered as not addressing the similarity issue between MIPAD and IPAD.
In her ruling, the Deputy Commissioner Ms Jacqueline Bracha noted that following the Appeal 5454/02 Tiv Tam vs Abrosia ruling, it was proper to consider the marks in their entirety rather than the separate elements thereof since customers consider marks in their entirety. Consequently, the fact that the words MINI and AIR may be descriptive and generic did not render IPAD AIR or IPAD MINI as descriptive or generic, by virtue of the IPAD which was descriptive, whether inherently so or by acquiring distinctiveness [due to the advertising, sales, etc.].
That MI means rice is unlikely to be known by most Israelis. Citing “Kerly’s Law of Trade Marks and Trade Names”, 15th ed. (2011) p. 301:
“The perception of marks in the mind of the average consumer of the category of goods or services in question plays a decisive role in the global appreciation of the likelihood of confusion.”
Since MIPAD has I next to Pad, the similarities between MIPAD and IPAD are compelling.
Regardless of whether the visual similarities between the MIPAD and the IPAD are due to functional reasons or design, they are very similar and this further increases the likelihood of confusion. See 4250-07-14 Gewiss S.P.A. vs. Timnah Electricity LTD
Both sides accept that the distribution channels and consumer base is identical, therefore it is concluded that there is a real likelihood of confusion.
In a competing marks procedure the three considerations are who filed first, scope of use and equitable behavior. Apple filed first. They have additional products in the IPAD line which indicates that their choice of mark was not an attempt to copy MIPAD. They also have other marks including AIR, such as MACBOOK AIR.
Furthermore, Apple has produced compelling evidence of greater use.
As Xiaomi has successfully registered its logo in Israel and elsewhere, one cannot rule out that their pending mark was chosen in good faith. Furthermore, had they attempted to register the mi logo together with PAD, this may have helped their case.
The similarity between the marks rules out coexistence. After weighing up everything, Apple’s marks are considered as preferable to continue to examination and Xiaomi’s mark for MIPAD is refused.
Since there was no hearing and Xiaomi did not take an active part, but also did not inform the Israel Patent and Trademark Office that they would not be attending, Xiaomi were ordered to pay costs of 6000 Shekels to Apple.
Ruling in competing marks procedure concerning pending trademark numbers 2610449, 261500 and 270078 (Xiaomi vs. Apple) by Deputy Commissioner Ms Jacqueline Bracha, 26 January 2016.
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