Jacob Schindler

In a trademark case which has attracted attention in the local media, the IP Office of the Philippines (IPOPHL) has dismissed an opposition filed by Apple against a Manila company’s attempt to register MY/PHONE. The tenor of press coverage provides yet another example of the challenges faced by a mega-company enforcing its brand against a local ‘David’. (One blog gleefully told Apple: “Hindi araw-araw pasko!” which translates to ‘not every day is Christmas’). But the reasoning used by the IPOPHL shows that Apple faces a legal conundrum just as frustrating as its PR one, because the notoriety of the iPhone actually worked against it in this case.

Solid Broadband, a low-cost phone maker, first attempted to claim the MY/PHONE mark on June 25 2007, just four days before the launch of the first iPhone, but well after Apple officially announced the new product (and filed the accompanying trademark with IPOPHL). Solid Broadband’s my/phone line also launched in 2007 and now includes 40 models; the company describes the handsets in its brief as “the first locally-branded mobile phones sold in the Philippines”. The local Filipino nature of the brand factored heavily in the applicant’s arguments. The my/phone is tagged as the first and only “Pinoy Phone”, and Solid Broadband’s court filing noted that its software includes local “recipes, jokes and even prayers”.

Playing up Solid Broadband’s status as a home-grown company – and portraying Apple as a bully – certainly played some role in the arguments. “This is a case of a giant trying to claim more territory than what it is entitled to, to the great prejudice of a local ‘Pinoy Phone’ merchant”, read the applicant’s brief. An advertisement for the my/phone submitted as evidence by Solid Broadband prominently features Filipino pop star Sarah Geronimo next to a phone with a physical, rather than touch-screen, keyboard. The fact that the my/phone is clearly targeted at a lower price point in a developing country has surely done Apple no favours in the public relations department. IPOPHL did cite the distinct commercial impressions generated by the advertisement and a screenshot of Apple’s iPhone website as a relevant factor in the decision.

In its comparison of the marks, IPOPHL first decided that, as the word ‘phone’ is generic and descriptive, its analysis would be confined to the words I and MY. According to Divina Gracia E Pedron, partner at Cruz Marcelo & Tenefrancia in Manila, this is the standard practice: “In the Philippines there are two tests to determine similarity. One is overall; the other is by looking at what’s dominant in the mark. In this particular case what is dominant really is ‘phone’. They need to take it out to determine whether what’s remaining is confusingly similar.” Of course ‘I’ and ‘MY’ look distinct, while sounding similar; interestingly IPOPHL found no similarity in meaning between the two, saying that in context ‘MY’ connotes possession, whereas the ‘I’ found before Apple products is abstract and left to the imagination.

But most importantly, the office made clear that it strains credibility to suggest that any consumer could confuse the iPhone with my/phone. “The buying public should be credited with a modicum of intelligence and discernment”, the opinion read. “The fame and popularity of iPhones in fact makes it improbable for one to confuse the my/phone product as an iPhone”.

This obviously leaves Apple in a very difficult position. It does seem near-impossible these days that any consumer could reasonably mistake anything that’s not an iPhone for an iPhone. And yet, notes Pedron, “even though they’re not exactly confusing, the fact they’re using the name does impinge on Apple’s goodwill”. However, the concept of dilution offers little help because the products are directly competing.  What’s a well-known trademark owner to do?

There have been similar cases of late, with the IP Office of Singapore deciding last year that SEIKO had such a long and established reputation that consumers would be unlikely to confuse it with SEIKI. As noted in the linked analysis of that case, the problem of “too well-known to be confused” is similar to the genericism issue, and while it may be less severe, it is no doubt just as vexing.

Apple can still file an appeal to the IPOPHL’s Office of the Director General, and after that to the court of appeals. Given that this case was submitted for decision in 2011 and has only been ruled on now, it could be quite a while before we know what becomes of the my/phone.

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