Another win for Apple in WHYPOD dispute

On May 7 2013 the Swedish Patent and Registration Office cancelled the trademark registration for WHYPOD following an opposition by Apple.

Apple claimed that the WHYPOD mark should be cancelled on the grounds that it was confusingly similar to the Community trademarks IPOD and POD. Further, Apple argued that:

• the IPOD mark is a well-known trademark; and
• use of the WHYPOD mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the IPOD mark.

The holder of the trademark WHYPOD disputed the grounds for the opposition, claiming that the distinctiveness of Apple's mark was limited by the descriptive suffix 'pod', which is a commonly known abbreviation for 'portable device' and, therefore, could not be monopolised by the opponent or anyone else. The trademark owner also stated that the marks were easily distinguishable visually, both by the general public and by the circle of conscious buyers that had to be taken into consideration when determining the relevant public.

The Patent and Registration Office found that the trademark IPOD is well known by a substantial part of the relevant public in Sweden. Therefore, IPOD should benefit from the additional protection afforded to a well-known trademark. According to the office, it seemed likely that the public would associate the parties' trademarks. Use of the WHYPOD mark might thus take unfair advantage of the distinctive character of IPOD. The office also found that, taking into account the fact that consumers often lack a real opportunity to compare two conflicting marks side-by-side, there was a likelihood of confusion between the marks.

Further, the Patent and Registration Office stated that Apple's registered trademark POD constituted a major element of the WHYPOD mark. Consequently, based on an overall assessment, there was a risk of confusion between POD and WHYPOD as well.

This ruling is fully in line with decisions of the Patent and Registration Office in previous oppositions made by Apple - for instance, against TRACKPOD and SCIPOD. In those cases, the office had found that:

• IPOD is a well-known trademark which benefits from additional protection; and
• the trademark POD is suggestive and is thus relatively distinctive for the goods and services for which it is registered.

One may conclude from these cases that the protection of both IPOD and POD is well grounded, and that it will be difficult for anyone to use a trademark containing the element 'pod' for similar goods without Apple’s permission.   

Tom Kronhöffer and Robin Ek, von lode advokat ab, Stockholm