In a case decided last week by the Australian trademark office, Apple, Inc objected to the trademark application filed by another company on the term, DOPi (iPod spelled backwards with emphasis on the “i”).
Apple argued that the application of the trademark should be rejected as an infringement on its trademark because the “particular coloring and orientation of the letter “i” in the mark, which as a whole, of course, is made up of the letters of the Opponent’s IPOD trade mark in reverse order, gave that letter particular prominence. 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. 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.”
“”The manner of that depiction would immediately bring to the consumer’s mind the association of the mark “i” with the Opponent and its family of “i” products, especially the iPod musical player in light of the use of the soundwave device.””
In rejecting Apple claim the Hearing Officer said:
“”A check of the register in fact indicates there are scores of parties with registrations for marks of this kind covering relevant goods and Apple cannot therefore claim a monopoly in them.
“”By way of example, iSoft, iSkin, IBOX, iPORT, iJOG, IWAKE, iDrive and iListen, all in separate ownership, are but a small selection of current third party registrations covering relevant class.
“”A check of Apple.com reveals many third party accessories for the Players are advertised, including accessories bearing the trade marks iSkin, iClear and iSee.
“Apple has not therefore demonstrated to my satisfaction that the person of ordinary intelligence and memory would be caused to wonder, or be left in doubt, about whether the Goods come from Apple merely because the Trade Mark terminates in the letter “i”, however that letter may be presented.
“”Nor do I think the fact that the Trade Mark is made up of the letters of the Apple’s IPOD trade mark in reverse order would cause a significant or substantial number of relevant consumers to wonder whether the Goods were those of the Apple.
“”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 amongst, a significant number of consumers. “”
Big winners here is anyone holding an “i” domain.
In case your wondering DOPI.com its owned by Hitfarm.