Updated: Oct 21, 2020
Author: Kamal Kishor, a fourth-year student at the Maharashtra National Law University, Nagpur.
1. Notice of Opposition
Apple is the world-famous designer, manufacturer, and marketer of mobile phones, communication, and media devices and personal computers, and seller of a variety of related software, services, accessories, and third- digital content and applications. Apple being one of the biggest companies in the world, its APPLE brand has become one of the best-known brands in the world. The Apple Marks are famous and distinctive around the globe. Recently, Apple has decided to take legal action against the developers of the app “Prepear” by filing a notice of opposition against the meal prep company claiming that their logo which is a pear too closely resembles Apple’s trademarked logo. “Prepear” is a recipe plan, grocery list, and meal organizer mobile application on iOS and Android. It started in 2017 when on January 26, 2017, a small company, Super Healthy Kids, Inc. filed Application Serial No. 87/315,348 to register the following mark which Apple claimed to be similar to its APPLE logo.
For many years, Apple’s APPLE brand (including the Apple Logo) has consistently been recognized as one of the world’s most famous brands. In May 2019, Forbes magazine ranked the APPLE brand as the world’s most valuable brand for the ninth year in a row, with an estimated valuation of $206 billion. Apple argued that the Apple Marks are so famous and instantly recognizable that the similarities in the disputed Mark will overshadow any differences and cause the ordinary consumer to believe the other company is related to, affiliated with, or endorsed by Apple. Hence, it has filed the Notice of Opposition and opposed the registration of the said Mark on the 2 following grounds that:
The disputed Mark is likely to cause confusion, mistake, or deception under Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d); and
The disputed Mark is likely to cause dilution under Section 43(c)(1) of the Lanham Act, 15 U.S.C.§ 1125(c).
2.1. Ground-1: Mark is likely to cause confusion, mistake, or deception.
Apple argued that it began to use the Apple Marks in commerce at least as early as 1976, and owns prior registrations for and prior common law rights in the Apple Marks, decades prior to the filing date of the disputed application. It further added that “Consumers encountering Prepear’s Mark are likely to associate the mark with Apple. the Mark consists of a minimalistic fruit design with a right-angled leaf, which readily calls to mind Apple’s famous Apple Logo and creates a similar commercial impression.”5 Furthermore, the Apple Marks are so famous and instantly recognizable that the similarities in the new Mark will overshadow any differences and cause the ordinary consumer to believe that it is affiliated with or endorsed by Apple. Therefore, Apple would be damaged by the registration of this Mark in connection with said services because the Mark so closely resembles the Apple Marks that it is likely to cause confusion, mistake, or deception in the minds of consumers as to the origin or source of services of Super Healthy Kids, Inc, or the affiliation or connection between this company and Apple, in violation of Section 2(d) of the Lanham Act, 15 U.S.C. § 1052(d).
2.2. Ground-2: Mark is likely to cause dilution
In the support of its 2nd ground, Apple argued that the Apple Marks are famous and distinctive within the meaning of Section 43(c) of the Lanham Act, 15 U.S.C. § 1125(c). The extraordinary level of fame and consumer recognition that the Apple Marks currently enjoy cannot be seriously disputed. Since the disputed mark is likely to cause dilution of the distinctiveness of the famous Apple Marks by eroding consumers’ exclusive identification of the Apple Marks with Apple, and by otherwise lessening the capacity of the Apple Marks to identify and distinguish the goods and services of Apple, therefore it is violative of Section 43(c)(1) of the Lanham Act, 15 U.S.C. § 1125(c)(1). Thereafter it added that Prepear’s Mark is highly similar in appearance, meaning, and commercial impression to Apple’s famous Apple Marks and if the other company is granted the registration, then it would thereby obtain a prima facie exclusive right to use its Mark and such registration would damage and injure Apple.
3. Apple the Biggest fish of the Ocean haunting a small start-up
Recently, Prepear’s co-owner, Natalie Monson through its social media posted that “Apple "has opposed the trademark application for our small business, Prepear, demanding that we change our obviously pear-shaped logo, used to represent our brand in the recipe management and meal planning business."
The contention of the co-founder of the start-up is that it is a small business and has only five members and fighting Apple on this matter could cost them tens of thousands of dollars. They added that going in a legal dispute with a company like Apple is a very terrifying prospect, but they feel a "moral obligation" to fight for the right to keep their logo. They further added that "We are defending ourselves against Apple not only to keep our logo but to send a message to big tech companies that bullying small businesses has consequences.” Through social media they have raised a petition to seek help from the rest of the world as of 10 August 2020 the petition has gathered almost 30,000 signatures.