International Commercial Law Blog

Apple succeeds in preventing the registration of “MI PAD” as an EU trade mark

In 2014, the Chinese company Xiaomi, a company specialising in electronics and mobile telephony, filed an application with the European Union Intellectual Property Office (EUIPO) for registration of the word sign “MI PAD” as an EU trade mark in respect of electronic devices and (tele)communication services. The company Apple filed a notice of opposition to the registration of that sign, invoking its earlier trade mark IPAD registered in respect of identical or similar goods and services.

In 2016, EUIPO upheld Apple’s opposition: having found that there was a significant degree of similarity between the signs at issue, EUIPO concluded that the differences between the two signs were not sufficient to rule out the existence of a likelihood of confusion and that the relevant public would think that the trade mark MI PAD was a variation on the trade mark IPAD.

Being dissatisfied with EUIPO’s decision, Xiaomi brought an action before the General Court seeking annulment of that decision.

In its recent Judgment in Case T-893/16 Press and Information Xiaomi, Inc. v European Union Intellectual Property Office (EUIPO), the General Court dismisses Xiaomi’s action and confirms that the sign MI PAD is not to be registered as an EU trade mark.

Regarding the comparison of the two signs, the General Court confirms EUIPO’s findings: visually, the signs at issue display a high degree of similarity owing to the fact that IPAD is entirely reproduced in MI PAD, that the two signs coincide as to the letter sequence ‘ipad’ and that they differ only as to the presence of the additional letter ‘m’ at the beginning of MI PAD. Phonetically, the signs at issue display an average degree of similarity for the English-speaking part of the relevant public (indeed, it is likely that this part of the relevant public will perceive the prefix “mi” as referring to the English possessive pronoun “my” and will thus pronounce the letter “I” of MI PAD and IPAD in the same way), and a high degree of similarity for the non-English-speaking part (this part of the public will tend to pronounce the ‘i’ in the same way in both marks). Lastly, conceptually, the signs at issue display an average degree of similarity for the English-speaking part of the relevant public (the common element ‘pad’ will be understood as meaning tablet computer, while the elements “mi” and “I” will be perceived as prefixes qualifying the common element “pad”, without significantly altering its conceptual meaning), and a neutral degree of similarity for the non-English- speaking part (since the common element “pad” has no meaning for this part of the public, the signs at issue, taken as a whole, are devoid of any particular conceptual meaning).

The General Court also confirms that, on the basis of the comparison thus made and in view of the identity or similarity of the goods and services covered by the two signs, EUIPO was correct to conclude that there was a likelihood of confusion on the part of the public. The General Court thus considers, as EUIPO did, that, first, the dissimilarity between the signs at issue, resulting from the presence of the additional letter “m” at the beginning of MI PAD, is not sufficient to offset the high degree of visual and phonetic similarity between the two signs, and, second, the relevant public will believe that the goods and services in question come from the same undertaking (or from economically-linked undertakings) and will think that the mark applied for MI PAD is a variation on the earlier trade mark IPAD.

For all these reasons, the General Court confirms EUIPO’s decision.

The Lego brick is not registrable as a Community trademark

The Lego brick is not registrable as a Community trademark as it is a sign consisting exclusively of the shape of goods necessary to obtain a technical result.

lego brik

The European Court of Justice (see judgment in Case C-48/09 Lego Juris v OHIM) finds that the main purpose of the prohibition on registration as a trademark of any sign consisting of the shape of goods which is necessary to obtain a technical result is to prevent trademark law granting an undertaking a monopoly on technical solutions or functional characteristics of a product. Thus, undertakings may not use trademark law in order to perpetuate, indefinitely, exclusive rights relating to technical solutions.

When the shape of a product merely incorporates the technical solution developed by the manufacturer of that product and patented by it, protection of that shape as a trademark once the patent has expired would considerably reduce the opportunity for other undertakings to use that technical solution. In accordance with the law of the European Union, technical solutions are capable of protection only for a limited period, so that subsequently they may be freely used by all economic operators.

In addition, the Court finds that by restricting the prohibition on registration to signs which consist “exclusively” of the shape of goods which is “necessary” to obtain a technical result the legislature duly took into account that any shape of goods is, to a certain extent, functional and that it would therefore be inappropriate to refuse to register a shape of goods as a trademark solely on the ground that it has functional characteristics. By the terms “exclusively” and “necessary”, the legislature sought to ensure that solely shapes of goods which only incorporate a technical solution, and whose registration as a trademark would actually impede the use of that technical solution by other undertakings, are not to be registered.

As regards the fact that the ground for refusal covers any sign consisting “exclusively” of the shape of goods which is necessary to obtain a technical result, the Court finds that that condition is fulfilled when, as in the present case, all the essential characteristics of a shape perform a technical function, the presence of one or more minor arbitrary elements with no technical function being irrelevant in that context.

The Court also finds that the position of an undertaking which has developed a technical solution cannot be protected – with regard to competitors placing on the market slavish copies of the product shape incorporating exactly the same solution – by conferring a monopoly on that undertaking through registering as a trademark the three-dimensional sign consisting of that shape, but can, where appropriate, be examined in the light of the rules on unfair competition.

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