Apple loses trademark case against Sydney SME

A small business has won the right to apply for a trademark containing the letter “i” as part of its product line despite protests from tech manufacturing giant Apple.

The case is just the latest in a string of arguments involving Apple, which has attempted to stop several businesses using any trace of the company’s product names.

The latest case involves Sydney-based Wholesale Central, which sells a number of accessories for iPods and iPhones including protective cases. The company is attempting to trademark the DOPi, (iPod spelled backwards), brand of accessories such as laptop cases.

However, Apple argued in a tribunal held by IP Australia that the trademark was “deceptively similar” to many of its own.

“The emphasis given to the letter “i” results in the consumer’s attention on seeing the mark being immediately deflected to that particular part of the mark,” Apple’s representative argued.

“The eye thus having been drawn to that particular part of the mark will perceive the very different treatment given to the letter “i” and also its close association with the three waves device. The aforesaid depiction creates a perception of that combination being the dominant and distinctive feature of the mark.”

However, registrar Michael Kirov argued Apple failed to show how a “person of ordinary intelligence and memory” could assume the DOPi product would be part of Apple’s range.

Additionally, he pointed out that many products also exist on the market using the letter “i” as a prefix which operates in the same market as Apple.

“I am satisfied from the evidence and from my own knowledge as a consumer that the IPOD mark was very well known in Australia as at the Priority Date in connection with, in particular, the Players.”

“However, given the obvious differences between the parties’ marks when considered as wholes, the fact that it is common for traders in relevant goods to feature the letter “i” in their trademarks and the lack of evidence of any instances of actual confusion, I am not satisfied use of the Trade Mark for any of the Goods would be likely to deceive, or cause confusion among, a significant number of consumers.”

The case comes after a number of trademark battles involving Apple. Last year, a Melbourne computer company said Apple was attempting to bury it with legal fees regarding the use of its titles, “Macpro Computers”.

Also last year, Apple challenged a trademark application from supermarket giant Woolworths, saying its new logo was too similar to its own.