Apple and WhatsApp’s Apps for Apps

272109 apple watch appOn 9 February 2015, Apple Inc submitted Israel trademark application no. 272109 comprising an image consisting of a white silhouette of a telephone receiver (hand-set) against a green circular background as shown.

280669

Before Apple’s trademark application was examined, WhatsApp Inc. filed Israel trademark application number 280669 comprising an image consisting of a white silhouette of a telephone receiver (hand-set) against a green circular speech bubble shaped background as shown.

 

 

Apple’s application was for “Computers; computer peripheral devices; computer hardware; computer gaming machines; hand-held computers; tablet computers; personal digital assistants; electronic organizers; electronic notepads; electronic book readers; handheld electronic game units adapted for use with an external display screen or monitor; handheld digital electronic devices and software related thereto; handheld mobile digital electronic devices capable of providing access to the Internet and for the sending, receiving, and storing of telephone calls, faxes, electronic mail, and other digital data; electronic handheld units for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; sound recording and reproducing apparatus; MP3 and other digital format audio players; digital audio recorders; digital video recorders and players; audio cassette recorders and players; video cassette recorders and players; compact disc recorders and players; digital versatile disc recorders and players; digital audio tape recorders and players; radios, radio transmitters, and receivers; audio, video, and digital mixers; audio amplifiers; audio receivers; audio decoders; car audio apparatus; earphones, headphones; audio speakers; microphones; audio components and accessories; modems; network communication apparatus; electronic communication equipment and instruments; audiovisual teaching apparatus; optical apparatus and instruments; telecommunications apparatus and instruments; global positioning system (GPS) devices; telephones; wireless communication devices for voice, data or image transmission; cables; apparatus for data storage; magnetic data media; chips, discs and tapes bearing or for recording computer programs and software; facsimile machines; cameras; batteries; televisions; television receivers; television monitors; set-top boxes; computer software; computer and electronic games; global positioning system (GPS) computer software; computer software for travel and tourism, travel planning, navigation, travel route planning, geographic, destination, transportation and traffic information, driving and walking directions, customized mapping of locations, street atlas information, electronic map display, and destination information; computer software for creating, authoring, distributing, downloading, transmitting, receiving, playing, editing, extracting, encoding, decoding, displaying, storing and organizing text, data, graphics, images, audio, video, and other multimedia content, electronic publications, and electronic games; computer software for use in recording, organizing, transmitting, manipulating, and reviewing text, data, audio files, video files and electronic games in connection with computers, televisions, television set-top boxes, audio players, video players, media players, telephones, and handheld digital electronic devices; computer software to enable users to program and distribute text, data, graphics, images, audio, video, and other multimedia content via global communication networks and other computer, electronic and communications networks; computer software for identifying, locating, grouping, distributing, and managing data and links between computer servers and users connected to global communication networks and other computer, electronic and communications networks; computer software for use on handheld mobile digital electronic devices and other consumer electronics; electronic publishing software; electronic publication reader software; computer software for personal information management; downloadable pre-recorded audio and audiovisual content, information, and commentary; downloadable electronic books, magazines, periodicals, newsletters, newspapers, journals, and other publications; database management software; character recognition software; voice recognition software; electronic mail and messaging software; computer software for accessing, browsing and searching online databases; electronic bulletin boards; data synchronization software; application development software; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; electrical and electronic connectors, couplers, wires, cables, chargers, docks, docking stations, interfaces, and adapters for use with all of the aforesaid goods; computer equipment for use with all of the aforesaid goods; electronic apparatus with multimedia functions for use with all of the aforesaid goods; electronic apparatus with interactive functions for use with all of the aforesaid goods; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods; covers, bags and cases adapted or shaped to contain all of the aforesaid goods; navigational instruments; apparatus to check stamping mail; cash registers; mechanisms for coin-operated apparatus; dictating machines; hemline markers; voting machines; electronic tags for goods; prize selection machines; weighing apparatus and instruments; measures; electronic notice boards; measuring apparatus; optical apparatus and instruments; wafers [silicon slices]; integrated circuits; fluorescent screens; remote control apparatus; lights conducting filaments [optical fibers]; electric installations for the remote control of industrial operations; lightning arresters; electrolyzers; fire extinguishers; radiological apparatus for industrial purposes; life saving apparatus and equipment; whistle alarms; sunglasses; animated cartoons; egg-candlers; dog whistles; decorative magnets; electrified fences; electrically heated socks; alarms, alarm sensors, and alarm monitoring systems; residential security and surveillance systems; smoke and carbon monoxide detectors; thermostats, monitors, sensors, and controls for air conditioning, heating, and ventilation devices and systems; electric and electronic door and window locks and latches; garage door openers; curtain, drape, window shade, and window blind openers; lighting controls; central processing units, microprocessors, semiconductors, computer chips and chipsets, and integrated circuits; all included in class 9.

WhatsApp’s application was filed in classes 38, 42 and 45 for Telecommunication services; Voice over internet protocol (VOIP) services; Audio teleconferencing; Teleconferencing services; Video teleconferencing; Web messaging; Peer-to-peer photo sharing and video sharing services, namely, electronic transmission of digital photo files, videos and audio-visual content among users; Providing access to computer, electronic and online databases; Telecommunications services, namely electronic transmission of data, messages, graphics, images, audio, video and information; Providing online chat rooms, instant messaging services, and electronic bulletin boards; Providing access to computer databases in the field of social networking; Audio, text and video broadcasting services over computer or other communication networks; Providing online forums for communication on topics of general interest; Providing online communications links that transfer mobile device and Internet users to other local and global online locations; all included in class 38.

Application service provider, namely, providing, hosting, managing, developing, and maintaining applications, software, web sites, and databases in the fields of wireless communication, mobile information access, and remote data management for wireless delivery of content to handheld computers, laptops and mobile electronic device; Providing temporary use of online non-downloadable software and applications for instant messaging, voice over internet protocol (VOIP), video conferencing, and audio conferencing־ Computer services, namely, creating an online community for registered users to engage in social networking־ Computer services, namely, creating virtual communities for users to participate in discussions, get feedback from their peers, and engage in social, business and community networking; Computer services, namely, hosting electronic facilities for others for interactive discussions via communication networks־ Providing online non- downloadable software־ Computer services, namely, hosting electronic facilities for others for organizing and conducting discussions via communication networks; Application service provider (ASP); Application service provider (ASP) services, namely, hosting computer software applications of others; Application service provider (ASP) featuring software to enable or facilitate the creating, editing, uploading, downloading, accessing, viewing, posting, displaying, tagging, blogging, streaming, linking, annotating, indicating sentiment about, commenting on, embedding, transmitting, and sharing or otherwise providing electronic media or information via computer and communication networks; Interactive hosting services which allow the users to transfer personal identity data to and share personal identity data with and among multiple online facilities publish and share their own content and images; Providing search engines for obtaining data on a global computer network or via communications network, namely, providing information from searchable indexes and databases of information, including text, electronic documents, databases, graphics, electronic media, photographic images and audio-visual information, on computer and communication networks; Providing temporary use of non-downloadable software applications for social networking, creating a virtual community, and transmission of audio, video, photographic images, text, graphics and data; Providing online facilities that gives users the ability to upload, modify and share audio, video, photographic images, text, graphics and data; Providing non-downloadable e-commerce software to allow users to perform electronic business transactions via global computer network; Computer services, namely, application service provider featuring application programming interface (API) software to allow users to perform electronic business transactions via a global computer network; Software as a service (SAAS) services featuring software for sending electronic message alerts, for transmitting orders and sending and receiving electronic messages, and to allow users to perform electronic business transactions via a global computer network; all included in class 42.

Online social networking services; Identification verification services, namely, providing authentication of personal identification information; Social introduction and networking services; User verification services; Identification verification services; all included in class 45.

Due to the perceived similarity of the marks and the perceived over-lapping services and goods, a competing marks proceeding was initiated under Section 29 of the Law.

Furthermore, the Examiner considered that Apple’s Applied for mark was confusingly similar to WhatsApp’s issued trademark number 247636 for the same logo in classes 9 and 38 for downloadable software, namely, instant messaging software, file sharing software, communications software for electronically exchanging data, audio, video images and graphics via computer, mobile, wireless, telecommunications networks and downloadable computer software for processing images, graphics, audio, video, and text in class 9 and Telecommunication services, namely, data transmission and reception services via telecommunication networks; electronic exchange of voice, data, audio, video, text and graphics accessible via computer and telecommunications networks; instant messaging services; mobile phone communication services in class 38, and considered it was therefore not registerable due to Section 11(9) of the ordinance.

On 6 April 2016, Apple submitted an affidavit from their legal advisor Mr Thomas R. La Perle  who handles their IP matters. After a number of extensions based on the parties attempting to negotiate a coexistence agreement, on 15 June 2017, WhatsApp submitted their evidence, including an Affidavit from Michael L. Johnson who serves as their Deputy President and one from Ms Shani Ovadiah who works for Eyal Bressler, WhatsApp’s legal counsel. In tandem, the parties announced that they had agreed to a coexistence agreement a copy of which was submitted to the Israel Patent Office for ratification purposes. The agreement did not limit or otherwise change the list of goods in the two Applications.

Decision

Coexistence agreements require approval of the Commissioner. This is to be guided by Section 30(a) of the Ordinance which states:

 Where it appears to the Registrar that there is honest concurrent use, or where there are other special circumstances which in his opinion justify the registration of identical or similar trade marks for the same goods or description of goods by more than one proprietor, the Registrar may permit such registration subject to such conditions and limitations, if any as he may think fit. (b) A decision of the Registrar under subsection (a) shall be subject to appeal to the Supreme Court. The appeal shall be filled within thirty days from the date of the decision of the Registrar. In the appeal, the Court shall have all the powers conferred upon the Registrar under subsection (a).

Thus a condition of registerability is that the parties acted in good faith. See the decision concerning marks 95267, 100851 ” for “Complete”  and “Complete System” in Allegran Inc vs. Contact Nielsen Ltd. 19 November 2003, page 12.

A further condition for parallel registration that is a basic purpose for the ordinance is that there should be no danger of misleading. parallel registration is not allowed in cases where the public could be misled, see 8778/04 Yotvata Dairies Ltd. vs. Tnuva Cooperative for Marketing Israeli Agricultural Produce Ltd., 30 April 2006.8778/04 Yotvata Dairies Ltd. vs. Tnuva Cooperative for Marketing Israeli Agricultural Produce Ltd., 30 April 2006.

According to Mr Thomas R. La Perle ‘s Affidavit, Apple’s application was for the App built into the Apple Smart-watch (Apple’s App for an App?), which is an extension of the software build into the i-phone so that they operate as a single entity. The operating system Watch OS interfaces with the iOS such that the Smart-watch receives information from the smart phone.

234294Apple has registered trademark No. 234294 as shown, known as the ‘Square Phone Icon’. Apple has made extensive use of this mark since 2007 as an icon for services related to managing telephone calls, contact lists and voice-mail in the i-phone. Over the years, the icon has changed slightly, and the new application is essentially a development of the already registered mark for use in smart-watches, which has been available since 2014.

In his Affidavit, Mr Thomas R. La Perle refers to the new mark as the “Apple Watch Phone Icon” since it appears only on the Apple smart-watch.

In contrast, WhatsApp’s Application is intended for various operating systems. The WhatsApp mark was launched with WhatsApp’s App in 2009 and has been available in Israel and in continuous use since then. WhatsApp claims that their mark is known and respected by the vast majority of smart-phone users and is a well-known mark as defined in the Law. Ms Ovadiah notes that WhatsApp may be downloaded from the Google Play Store and from the Apple App Store, and supplied evidence that it was the most popular service downloaded from both sites.

In light of the above, it is clear that neither applicant is attempting to benefit from the other’s reputation.

After being convinced that there was no likelihood of confusion despite the similarity of the marks, the same handset image, color scheme, distribution channels and services, the Deputy Commissioner ruled that both marks may be registered.

The white frame around the WhatsApp bubble icon causes it to be slightly different from the not framed Apple circular icon and since both icons are so well-known, there is no likelihood of confusion.

Thus the competing mark’s procedure is concluded and WhatsApp’s 280669 mark may be registered.  As to Apple’s 272109 mark, the commissioner is not convinced that it is exclusive to Apple and notes that there is an outstanding Office Action, so is returning it to the Examiner for further examination on its merits.

Conclusion

The coexistence agreement is accepted. WhatsApp’s 280669 mark is registerable on submission of the list of goods in class 42 being submitted in Hebrew.  Apple’s 272109 mark is returned to the Examiner for further examination.

280669 and 272109 Apple vs. WhatsApp Competing Marks Ruling by Ms J Bracha, 14 August 2017.

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