CLASS 46
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MONDAY, 17 JUNE 2013
Sweden protects IPOD against WHYPOD
The Swedish Patent and Registration Office (PRO) last month cancelled the trade mark registration for WHYPOD following an opposition by Apple. According to Apple, WHYPOD was confusingly similar to its own earlier Community trade marks IPOD and POD. Additionally, IPOD was a well-known trade mark and the use of WHYPOD would take unfair advantage of, or be detrimental to, the distinctive character or repute of the IPOD mark.
The holder of the trade mark WHYPOD maintained that the distinctiveness of Apple's mark was limited by the descriptive suffix 'pod' -- a common abbreviation for 'portable device' -- which could not be monopolised. Further, the marks were easily distinguishable visually, both by the general public and by the circle of conscious buyers that had to be taken into consideration when determining the relevant public.
The PRO concluded that, since IPOD was well known to a substantial part of the relevant Swedish public in Sweden, it should benefit from the additional protection afforded to well-known trade marks. Since, according to the PRO, it seemed likely that the public would associate the parties' trade marks, use of WHYPOD might thus take unfair advantage of the distinctive character of IPOD. Further, taking account of the fact that consumers often lack a real opportunity to compare two conflicting marks side-by-side, there was a likelihood of confusion between the marks. Finally, Apple's registered trade mark POD constituted a major element of the WHYPOD mark and there was therefore a risk of confusion between POD and WHYPOD too.
This ruling is consistent with earlier PRO decisions in oppositions by Apple to applications to register TRACKPOD and SCIPOD.
Source: note by Tom Kronhöffer and Robin Ek (von lode advokat ab, Stockholm), published online in World Trademark Review, 10 June 2013. Posted by: Blog Administrator @ 09.08
Tags: Sweden,
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Sweden protects IPOD against WHYPOD
The holder of the trade mark WHYPOD maintained that the distinctiveness of Apple's mark was limited by the descriptive suffix 'pod' -- a common abbreviation for 'portable device' -- which could not be monopolised. Further, the marks were easily distinguishable visually, both by the general public and by the circle of conscious buyers that had to be taken into consideration when determining the relevant public.
The PRO concluded that, since IPOD was well known to a substantial part of the relevant Swedish public in Sweden, it should benefit from the additional protection afforded to well-known trade marks. Since, according to the PRO, it seemed likely that the public would associate the parties' trade marks, use of WHYPOD might thus take unfair advantage of the distinctive character of IPOD. Further, taking account of the fact that consumers often lack a real opportunity to compare two conflicting marks side-by-side, there was a likelihood of confusion between the marks. Finally, Apple's registered trade mark POD constituted a major element of the WHYPOD mark and there was therefore a risk of confusion between POD and WHYPOD too.
This ruling is consistent with earlier PRO decisions in oppositions by Apple to applications to register TRACKPOD and SCIPOD.
Source: note by Tom Kronhöffer and Robin Ek (von lode advokat ab, Stockholm), published online in World Trademark Review, 10 June 2013. Posted by: Blog Administrator @ 09.08
Tags: Sweden,
Sharing on Social Media? Use the link below...Perm-A-Link: https://www.marques.org/blogs/class46?XID=BHA3260
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