Oh me oh my, "MI" is not "I" - "MI PAD" and "IPAD" are not similar

Apple Inc. v Xiaomi Singapore Pte Ltd [2017] SGIPOS 10

Facts

On 9 April 2014, Xiaomi Singapore Pte Ltd ("the Applicant") filed an application for registration of the mark "MI PAD" in Classes 9 and 38 ("the Application Mark"). Apple Inc. ("the Opponent") opposed the registration by relying on its earlier trade marks for "IPAD" in the same  Classes,  covering overlapping goods and services, including "tablet computers", "personal digital assistants", "telecommunication access services", and "transmission of data and of information by electronic means". 

The Opponent relied on various grounds under the Trade Marks Act, namely:

• Mark- and Goods-similarity, and existence of a likelihood of confusion under Section 8(2)(b);
• "IPAD" as a well known mark and therefore deserving of protection against damaging connection, dilution, and unfair advantage under 8(4)(a) read with 8(4)(b)(i), and 8(4)(b)(ii); 
• Use of "MI PAD" liable to be prevented by law of passing off, under Section 8(7)(a); and
• Bad faith under Section 7(6).

"MI PAD" and "IPAD" are not similar

The PAR identified two distinctive features of the Opponent's earlier trade marks:

1. The "I" prefix; and 
2. The single invented word formed by conjoining the elements "I" and "PAD, i.e. "IPAD". 

The Application Mark contained all the letters of the "IPAD" mark and in the same sequence, but the PAR held that this was not conclusive of mark similarity. In finding that the marks were dissimilar, the PAR reasoned as follows:

• The common component between the marks is "PAD" (and not "IPAD"), which is descriptive of goods and services which are linked to tablet computers and therefore unlikely to dominate the consumer's overall perception of the marks. 
• In the Application Mark, the letter "I" is conjoined with "M" to form another distinct word "MI", which is separate from "PAD", and therefore does not capture either of the distinctive features of the "IPAD" mark.
• The visual difference ("MI" vs "I") appears at the beginning of the marks and, coupled with the fact that the marks are short, is unlikely to be overlooked or overshadowed. 
• The average consumer would pronounce the marks as "mee pad" and "eye pad" respectively. Since the identical second syllable is descriptive and non-distinctive, its aural significance is lessened. Greater significance was given to the aural comparison between the first syllables, which were found to be dissimilar.
• In terms of conceptual similarity, the average consumer may associate "MI" with music and the song "Do-Re-Mi", or perhaps consider it an invented and meaningless word. Either way, "MI PAD" would be conceptually different from the idea of personal possession which the "IPAD" mark evokes. 

Under the step-by-step approach, a finding that the marks are dissimilar rather than similar would be enough to dispose of the matter in favour of the Applicant.

Likelihood of confusion

Nonetheless, the PAR went on to conclude that a likelihood of confusion was not apparent. Among other factors, the PAR considered that the reputation of the "IPAD" mark – which was inextricably linked to the Opponent's well known "I-prefix" family of marks – was likely to militate against any likelihood of confusion.   

Opposition unsuccessful

Given the dissimilarity between the marks and the finding that there was no likelihood of confusion, the grounds of opposition under Sections 8(2)(b), 8(4)(a) read with 8(4)(b)(i), and 8(7)(a) failed. The ground under Section 7(6) also failed, as the Opponent's arguments were premised on the "substantial identity" between the marks. 

As regards Section 8(4)(b)(ii), the PAR held that the Opponent failed to discharge its burden of showing that its "IPAD" mark was well known to the public at large in Singapore. In particular, the PAR noted that there was no evidence of the following:

• Advertising figures for the "IPAD" mark in Singapore – the figures provided related to total expenditure across all of the Opponent's products;
• Sales figures relating to the "IPAD" mark in Singapore – the figures provided related to sales of all the Opponent's products in Asia Pacific or the sales for the "IPAD" mark globally; and
• Evidence of the degree of recognition of the "IPAD" mark in Singapore – the PAR noted that in all the prior cases where the marks had been found to be well known to the public at large, survey evidence was submitted to show the level of recognition of the mark in Singapore.

Key takeaways

• Even if at first blush an earlier trade mark is wholly subsumed within a later trade mark, it does not automatically follow that the marks are similar. What is crucial is whether the later mark captures the distinctiveness of the earlier mark, having regard to matters such as the overall impression of the marks; the differences in structure and perception notwithstanding a shared component; and the degree of distinctiveness residing in the shared component. 
• Where the reputation of an earlier trade mark may potentially militate against any likelihood of confusion, this case emphasises the importance of tendering appropriate evidence to establish that the mark is well known to the public at large, as the anti-dilution right is not premised on any likelihood of confusion. The evidence must be Singapore-specific and mark-specific. Survey evidence may also be required, as extensive use and promotion may not necessarily mean that the mark is well known to the public at large; it is the effect of the use and promotion of the mark in the minds of the public at large that matters. At the same time, however, proprietors should remain mindful of the strict guidelines for the conduct of market surveys, as set out in Ferrero SPA v Sarika Connoissuer Cafe Pte Ltd [2011] SGHC 176 at [134]. It is apparent from a number of cases that the courts treat market surveys with great care and circumspection. 
• The PAR's decision once again follows a trajectory of recent cases in Singapore such as (i) Seiko Holdings Kabushiki Kaisha v Choice Fortune Holdings Limited [2014] SGIPOS 8; (ii) Converse Inc v Southern Rubber Works Sdn Bhd [2015] SGIPOS 11; and (iii) Han’s (F & B) Pte Ltd v Gusttimo World Pte Ltd [2015] 2 SLR 825, which have held that the fame of a mark may actually work against a brand owner.

There may be further opportunity for the High Court to weigh in on this matter if an appeal ensues.