Apple's marks and logo held to have enhanced distinctiveness

On August 26 and September 9 2010 the Intellectual Property Court has annulled decisions of the Taiwan Intellectual Property Office (TIPO) and the Ministry of Economic Affairs, holding that the figurative mark APPLE LINE was confusingly similar to the well-known APPLE marks.
Shanbao Communication Co Ltd, a Taiwanese company, obtained registrations for the mark APPLE LINE (and apple design) (Registrations 1326262 and 1326263):

The registrations covered "cards, envelopes, letters, greeting cards, birthday cards, bookmarkers, notepapers, index cards, class schedules, certificates, loose leaves, data cards, message cards, curriculum vitae, indexes, books, workbooks, note books, calendars, posters" and "tapes, glues, book covers, ticket holders, book holders, file folders, document folders, binders, punchers, paper clips, stationery folders, folders, correction pens, information folders, portfolio, notes folders, information packs, labels, stationery packs", respectively, in Class 16 of the Nice Classification.  
On November 28 2008 US company Apple Inc filed oppositions against the registrations based on the following earlier marks:
  • the Apple logo (Registration 283644); 
  • the word 'apple' in Chinese (Registration 283645);
  • APPLE (Application 095057197);
  • APPLE PRESS (Registration 732674); and
  • other well-known APPLE marks. 
The TIPO found that the word 'apple' is the name of a common fruit and that the ideas behind the parties' marks were different. Therefore, there was no likelihood of confusion among the public, and the oppositions were dismissed.
Apple filed administrative appeals with the Ministry of Economic Affairs. The ministry dismissed the appeals and upheld the TIPO's decisions based on the same grounds. Apple then filed administrative actions before the Intellectual Property Court.
On August 26 2010 the court annulled the decisions of the TIPO and the ministry with regard to Registration 1326263 and requested that the TIPO re-examine the case based on the following findings:
  • Due to their well-known status, the APPLE marks had acquired enhanced distinctiveness.
  • The image of an apple is associated with Apple's famous marks in the minds of consumers. In addition, the word 'apple' in the opposed mark is confusingly similar to Apple's marks APPLE, APPLE PRESS and 'apple' in Chinese. Further, despite the differences between the elements 'line' and 'press', the APPLE LINE mark is confusingly similar to the APPLE PRESS mark.
  • The goods covered by the marks are identical or similar.
On September 9 2010 the court issued another judgment in favour of Apple and annulled the decisions of the TIPO and the ministry with regard to Registration 1326262. The court also requested that the TIPO cancel the registration based on the same grounds as those set forth in the previous decision. In this case, the court found that the APPLE marks were well known for a variety of products and services, and that some of the goods covered by the parties' marks overlapped. Therefore, the co-existence of the marks on the market would cause confusion among consumers.
Shanbao may still appeal to the Supreme Administrative Court.
Joseph S Yang, Lee and Li Attorneys at Law, Taipei

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