Apple Can’t Block Xiaomi’s ‘Mi Pad’ Trademark in Singapore

Apple Inc. can’t block the registration of the “MI PAD” word mark by the Singaporean subsidiary of a popular Chinese device maker, the Intellectual Property Office of Singapore has ruled.

Xiaomi Singapore Pte. Ltd., sought to register “MI PAD” for tablet computers, among other electronic products and related services in Classes 09 and 38. Apple, the registered proprietor of numerous trademarks in Singapore, including “IPAD” also in Classes 09 and 38, opposed the registration (Xiaomi Singapore Pte. Ltd. v. Apple Inc., [2017] SGIPOS 10).

The decision is an example of how the IP office and courts analyze whether there is confusing similarity between marks, and how a mark’s strong reputation can actually hurt the owner when it opposes the registration of another trademark.

Apple objected to the registration of the Xiaomi’s mark on the following grounds:

• a. Confusing similarity in the mark and goods and the existence of a likelihood of confusion under Section 8(2)(b) of the Singapore Trade Marks Act;
• b. That Apple’s mark is well known in Singapore, under Section 8(4)(a) read with 8(4)(b)(i);
• c. That Apple’s mark is well known to the public at large in Singapore, under Section 8(4)(b)(ii);
• d. That Xiaomi is attempting to pass off its mark as related to Apple’s, under Section 8(7)(a);
• e. That Xiaomi’s application was made in bad faith, under Section 7(6).

Not Similar

Apple’s opposition failed based on the registrar’s conclusion that the two marks weren’t similar.

The registrar had found that “pad” is a synonym for tablet computers. However, the registrar also accepted that Apple’s “IPAD” possessed a reasonably high degree of acquired distinctiveness due to its reputation and success in Singapore.

In analyzing the “IPAD” mark and after surveying Apple’s evidence, the registrar identified two distinctive features of Apple’s “IPAD” mark. First, it found that the “I-prefix” structure is a famous naming convention of Apple’s. Second, it found that “I” and “PAD” are conjoined to form a single invented word.

While Xiaomi’s “MI PAD” mark contained the entirety of the letters in Apple’s “IPAD” mark, this was insufficient to ground a finding of visual similarity. The key question is instead whether the later mark captures the distinctiveness of the earlier mark, the registrar said.

The registrar found that no visual similarity existed based on the fact that “MI PAD” consists of two words which breaks up the letters “IPAD” and does not capture the second distinctive feature of Apple’s mark.

Furthermore, the registrar found “MI PAD” begins with the word “MI” and this is distinct from the “I-prefix” of Apple’s naming convention for its marks. This visual difference, “MI” v. “I,” which appears at the beginning of the marks, coupled with the fact that the marks are short, is not negligible nor likely to be overlooked or overshadowed.

The registrar appeared to accord much weight to the fact that the “MI PAD” consists of two words, which was different from the sole word “IPAD.” As a result, Xiaomi’s mark did not capture the distinctiveness of the “IPAD” mark, which generated a different visual impression.

With regard to the pronunciation of “MI,” the registrar found that the average consumer in Singapore would pronounce it as “Mee,” rhyming with “bee,” rather than the “Eye” pronunciation for “IPAD,” and accordingly the marks were more aurally dissimilar than similar.

The registrar also found the marks not to be conceptually similar as “IPAD” evokes the idea of personal possession, which is not the case for “MI PAD”, where “MI” is likely associated with music or as an invented word.

One perspective on the issue to consider is the scope of monopoly of the “IPAD” mark. “Pad” was found to be synonymous with tablet computers and was thus a strongly descriptive element of the mark. The distinctive feature was in fact the “I” prefix being used in conjunction (as one word) with the word “pad.” The “I” prefix is as simple as one can get as it uses just one letter of the alphabet. Moreover, the letter being used is a vowel which tends to be the more commonly used letters in the English language. If Apple had succeeded, would it then follow that it can stop any party from using “[insert letter] PAD”? If so, would this unjustifiably extend the scope of monopoly over and above what has been registered as a trade mark?

No Likelihood of Confusion

Since Singapore adopts the step-by-step approach in assessing a likelihood of confusion under section 8(2)(b), the fact that the marks were not found to be similar meant that this particular ground of opposition failed. Nevertheless, the registrar went on to assess whether there was a likelihood of confusion.

In determining that there was no likelihood of confusion, the registrar said that the reputation of the “IPAD” mark is likely to have a contrary effect on the likelihood of confusion, because of the fact that Apple uses its well-known “I-prefix” family of marks and the “MI PAD” mark does not have this feature.

The registrar also pointed to the fact that electronic equipment, including tablet computers, are relatively expensive products, and this meant that consumers would tend to pay more attention during the purchase process and this would reduce any likelihood of confusion arising. This was buttressed by the fact that such purchases would tend to be more infrequent and also that the item itself is fairly complex such that consumers would be more fastidious and judicious in their purchases, the registrar said.

The registrar’s conclusion highlights the fact that a registered trademark’s strong fame or reputation can actually work against the registered proprietor in finding that there is no likelihood of confusion. Such a trend may signal that the registry and courts are attempting to achieve a policy objective by not allowing registered proprietors, especially famous ones, to overextend their monopoly rights.

Well-Known Mark

Apple’s opposition based on the argument that its mark is well known failed, since they were premised on the “substantial identity” between the marks. Nevertheless, the registrar went on to analyze whether the other elements under this ground had been made out and concluded that the “IPAD” mark was indeed well-known in Singapore.

However notwithstanding the fact that the “IPAD” mark is well known in Singapore, Apple failed to establish a connection between Xiaomi’s goods and itself and therefore also failed to show that use of “MI PAD” is likely to damage its interests.

Well Known to Public

The argument that “IPAD” was well known to the public also didn’t prevail.

In order to succeed under this ground, Apple had to show that its mark is well-known to the public at large. On the facts of the case, Apple had failed to meet this threshold because the evidence adduced it presented related to its business as a whole, and not the “IPAD” mark. As such, the registrar found the evidence to be insufficient in showing that the “IPAD” mark is well known to the general public.

No Passing Off

Apple’s passing off argument also failed.

The fact that it has goodwill in Singapore was not in dispute, but it failed to show that the use of “MI PAD” would amount to a misrepresentation, because the marks were not similar.

No Bad faith

Apple’s argument that Xiaomi registered the mark in bad faith was also unsuccessful. Xiaomi did not deny that it had knowledge of the “IPAD” mark when it sought to register its “MI PAD” mark. However, the registrar found that knowledge of a trade mark belonging to an opposing party per se is not sufficient to constitute bad faith.

Moreover, Xiaomi had used its house brand to name the “MI PAD” and had used “MI” as a prefix for several of its products since 2010, the registrar said.