In today’s world, companies compete more than ever before on the basis of innovation, creativity and quality rather than on price. This is why the value of other assets such as intellectual property rights has increased significantly.
The EU institutions have recognised the importance of such rights and over the years sought to secure a robust legal framework and system so that entrepreneurs have at their disposal the necessary tools for ensuring the utmost protection of such rights.
Where trademarks are concerned, the EU has come up with the appropriate legislative framework to facilitate the registration of such intellectual property rights both at national level at the industrial property offices of the different EU countries or at EU level as a ‘European Union trade mark’ (EUTM) at the European Union Intellectual Property Office (EUIPO) found in Alicante, Spain. National and EUTMs coexist and are complementary to each other and the same trademark can be registered at EU and/or national level.
The registration of a trademark not only confers on its proprietor the exclusive right to use such a mark but also provides legal certainty and reinforces the position of the right holder in litigation procedures.
A recent judgment delivered by the General Court clearly upholds the rights of intellectual property rights owners in such a way as to ensure that others do not take a free ride over the investments of those who have dedicated time, effort and money in coming up with innovative products or solutions.
Chinese company Xiaomi filed an application with the EUIPO for the registration of the word sign ‘MI PAD’ as an EU trade mark in respect of electronic devices and (tele) communication services. Apple opposed the registration of such a mark, invoking its earlier trademark IPAD registered in respect of identical or similar goods and services.
The EUIPO upheld Apple’s opposition noting that there was a significant degree of similarity between the signs at issue. The 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 of the trademark IPAD. Consequently, Xiaomi filed an action before the General Court seeking the annulment of such a decision.
The General Court observed that visually, the signs at issue display a high degree of similarity owing to the fact that IPAD is entirely reproduced in MI PAD. Furthermore, the two signs coincide as to the letter sequence ‘ipad’ and they differ only as to the presence of the additional letter ‘m’ at the beginning of MI PAD.
The EU institutions persevere in their efforts to secure the protection of intellectual property rights for their proprietors
The Court also took into consideration the fact that phonetically, the signs at issue display an average degree of similarity for both the English and non-English speaking part of the relevant public. It is likely, the Court noted, that the English speaking part of the public would perceive the prefix ‘mi’ as referring to the English possessive pronoun ‘my’ and would thus pronounce the letter ‘i’ of MI PAD and IPAD in the same way.
Insofar as the non-English-speaking part of the public is concerned, it is highly probable that they would pronounce the ‘i’ in the same way in both marks, the Court observed. The Court also highlighted the fact that conceptually the signs at issue display an average degree of similarity. The English-speaking part of the relevant public would understand the common element ‘pad’ to mean tablet computer, while the elements ‘mi’ and ‘i’ would be perceived as prefixes qualifying the common element ‘pad’, without significantly altering its conceptual meaning. To this end, the General Court confirmed that in view of the identity or similarity of the goods and services covered by the two signs, there was a likelihood of confusion on the part of the public.
The Court ruled that the dissimilarity between the two signs, resulting from the presence of the additional letter ‘m’ at the beginning of MI PAD, was not sufficient to counterbalance the high degree of visual and phonetic similarity between them. The public would thus be led to believe that the items in question are the product of the same undertaking and that the mark MI PAD is simply a variation of the earlier trademark IPAD. The General Court therefore confirmed EUIPO’s decision that the sign MI PAD could not be registered as an EU trade mark.
The EU institutions persevere in their efforts to secure the protection of intellectual property rights for their proprietors. This takes place not only through rulings such as the one discussed above but furthermore through the incessant measures being proposed by the European Commission to step up the fight against counterfeiting and piracy and to ensure a harmonised high level of legal and judicial protection of intellectual property rights across Europe.
Mariosa Vella Cardona M’Jur, LL.D., is a freelance legal consultant. She specialises in European law, competition law, consumer law and intellectual property law.
mariosa@vellacardona.com