Patent & Trade Mark

Apple fails in latest David and Goliath battle

Date: 31 March 2010
Author: Larissa Wayne

No wonder the letter "i" is synonymous with Apple, with iconic products such as iPod, iPad, iPhone, iTunes and iMac vying for market dominance. However, a recent decision by the Australian Trade Marks Office has dealt a severe blow to Apple's effort to monopolise the letter "i" as part of the name of its products.

Apple launched opposition proceedings against a small Sydney company which applied to register the trade mark DOPi, iPOD in reverse, for laptop bags and cases adapted for use with Apple products. The Sydney company submitted that DOPi stands for Digital Options and Personalised Items.  The basis of Apple's objection was that the DOPi name was too similar to iPod for portable music players.

The hurdle which Apple failed to reach is that a "person of ordinary intelligence and memory" would automatically assume that a product name including the letter "i" is an Apple product.  The Hearing Officer said that while it clearly cannot have escaped the Applicant's attention that DOPi also happened to be iPOD in reverse, "this 'coincidental' similarity is not enough to render the Trade Mark "deceptively similar" to the iPOD mark".

While this decision potentially paves the way for more trade marks with the letter "i", it has not necessarily weakened any of Apple's current "i" trade marks.  Apple is infamous for challenging any individual or company that it believes may be infringing its copyright and trade marks.

Apple is also no stranger to defending legal battles, for example when it adopted the trade marks iPhone and iPad, which were owned by other companies.  Apple later secured a deal with the electronics giant Cisco to acquire the iPhone trade mark, and is currently in negotiation in the USA with Fujitsu, which has been selling its own iPad product since 2002.

Another example of Apple flexing its legal muscle has surfaced in relation to the Macpro trade mark. Macpro Computers, a small Melbourne company has sold "Macpro" computers for twenty-six years, but in an unfortunate oversight, never registered its Macpro trade mark. When Apple applied to register the Macpro trade mark in 2006, Macpro Computers successfully opposed the application. Apple has appealed the decision to the Federal Court which will be heard in June this year.

It is prudent to file your trade mark at the earliest opportunity to protect your trade mark and because registration provides notice to others in the market of your ownership of your trade mark.

Footnote: Apple Inc v Wholesale Central Pty Ltd [2010] ATMO 7 (21 January 2010)

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