'Nod' to IPHONE mark will not necessarily result in confusion

New Zealand

The appropriate penumbra of well-known marks has arisen in a recent New Zealand case involving Apple’s IPHONE trademark.

A local businessman, Hayden Crowther, came up with the idea of protecting smartphones from the rigours of the outdoors by producing cases for them that protect and allow use of the devices while they are safely inside the cases.

The name he chose for these cases was 'driPhone', and he applied for a trademark in Class 9 of the Nice Classification for DRIPHONE for “waterproof electronics cases including cases for mobile phones”.

The application came to the attention of Apple Inc, which opposed registration of the mark. In Crowther v Apple Inc ([2013] NZIPOTM 48, December 16 2013)), Assistant Commissioner of Trademarks Jane Glover held that Apple had not made out any of its grounds of opposition. 

Apple attacked the application on the basis that it was likely to deceive and confuse consumers because of its reputation in the IPHONE mark and on the basis of three prior IPHONE registrations.

Somewhat surprisingly, Crowther challenged Apple’s reputation in the IPHONE mark. The assistant commissioner held that, at the relevant date in 2011, Apple’s reputation in the IPHONE mark was “unquestionably established”, citing, among other things, the queues outside Vodafone stores of those wanting to buy the first iPhone devices in 2010. 

The onus then passed to Crowther to show that use of his DRIPHONE trademark would not deceive consumers in the face of the reputation which Apple had in its IPHONE mark.

Crowther submitted that the marks looked and sounded very different. He referred to the letter 'i' as being short for 'internet', and also as being in use by companies other than Apple for electronic products. He distinguished his mark as not using 'i' as a prefix and said that, instead, it was a combination of two known words, 'dry' and 'phone'. He claimed to have chosen to spell his mark with an 'i' instead of a 'y' in the 'dry' prefix to avoid a descriptiveness objection. The assistant commissioner held that, as the 'phone' element of each of the marks was highly descriptive, the emphasis fell on the prefix, and she considered that 'dri' looks and sounds quite different to 'i'. She considered that consumers would see the mark as 'dri-phone'.

On the issue of same or similar goods, she found little evidence of use of the IPHONE mark on goods other than the phone device itself, so there was use on similar goods only.

On the critical issue of likelihood of confusion, Apple argued that its IPHONE mark was a household name, and was highly distinctive. Crowther's mark would cause consumers to wonder if driPhone cases were made by Apple or licensed or endorsed by it. This was accentuated by the likely manner of use - the capital 'P' in 'driPhone' alongside 'iPhone'. Apple also cited a newspaper article in which Crowther was quoted as referring to his name as a play on the iPhone brand.

The assistant commissioner noted that the article was only evidence of what was reported and not of what was actually said, but did consider it likely that the IPHONE mark had influenced Crowther‘s choice of mark.

She did not however consider that this 'nod' to the IPHONE trademark would necessarily result in deception or confusion. In so doing, she referred to the lack of evidence of confusion during a period of trading for over a year and the differences in the prefixes. Given that 'i' referred to 'internet', and 'dry' referred to 'waterproof', she further considered the marks were not sufficiently similar to cause confusion.

She also referred to Apple’s extensive family of 'i' marks and the fact that it had deliberately educated the public to recognise its products by the prefix 'i'.

The mark will proceed to registration unless the decision is appealed.

Rosemary Wallis, Baldwins Intellectual Property, Auckland

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