Apple Inc v Penta Security Inc [2024] SGIPOS 10

Introduction

In the world of business, protecting your brand is paramount. One crucial aspect of brand protection is understanding how trade mark law works, particularly when a competitor seeks to register a mark that you believe infringes on your rights. Legal decisions in this area provide valuable insights into the challenges and requirements for enforcing your brand’s protection.

This case note examines a decision from the Intellectual Property Office of Singapore (IPOS), Apple Inc v Penta Security Inc [2024] SGIPOS 10. It involved a well-known technology company, Apple Inc., opposing a trade mark application by Penta Security Inc.. While the name “Apple” is globally recognized, the tribunal’s detailed analysis of the competing marks and the legal grounds of opposition offers important lessons for businesses of all sizes seeking to safeguard their brand identity. We will break down the key aspects of this decision.

Background

Apple Inc. (the Opponent) opposed a trade mark application by Penta Security Inc. (the Applicant) for the mark “WAPPLES” in a device form. The Applicant sought to register this mark in Class 9 for goods including recorded computer software, recorded computer operating programs, recorded computer programs, and computers.

Apple based its opposition on several grounds under Singapore’s Trade Marks Act, relying on its earlier registered trade marks incorporating the word “APPLE”:

1. Likelihood of Confusion (Section 8(2)(b)): Apple argued that the Applicant’s mark was similar to its own earlier marks and was applied for identical or similar goods, creating a likelihood that the public would be confused.
2. Well-Known Marks (Section 8(4)): Apple contended that its marks were well-known in Singapore and that the Applicant’s mark, being similar, would either cause confusion or indicate a connection likely to damage Apple’s interests.
3. Passing Off (Section 8(7)(a)): Apple claimed that registering and using the Applicant’s mark would amount to the common law tort of passing off, based on Apple’s alleged goodwill, the likelihood of misrepresentation by the Applicant, and resulting damage to Apple.
4. Bad Faith (Section 7(6)): Apple also argued that the Applicant filed the trade mark application in bad faith.

Key Issues

The central questions for the IP Adjudicator were whether Apple could prove, for each ground of opposition, that the Applicant’s mark should not be registered because it was too similar to Apple’s marks, would cause confusion, or was applied for improperly.

The Decision

The IP Adjudicator ultimately dismissed the opposition on all grounds. This means the Applicant’s trade mark was allowed to proceed towards registration in Singapore. The Applicant was also awarded costs.

Why the Tribunal Decided That Way

The decision hinged on the IP Adjudicator’s assessment of the evidence and the legal tests for each ground:

• Likelihood of Confusion: The tribunal applied the required step-by-step approach.
  • Marks Similarity: This was the crucial first step. The Adjudicator compared the marks visually, aurally, and conceptually.
    • Visual Similarity: The Adjudicator found the marks to be visually dissimilar. The Applicant’s mark was viewed as a whole, and the consistency in stylisation meant the “W” wasn’t especially emphasized. An average consumer would notice the different letters (“WAPPLES” vs “APPLE”) and the different lengths. The mark was found to have an average, medium level of inherent distinctiveness.
    • Aural Similarity: The marks were found to have some aural similarity, particularly if one pronounced the Applicant’s mark by emphasizing the “APPLE” part or even disregarding the “W”. Possible pronunciations like “wear-pples” were considered.
    • Conceptual Similarity: Both marks were found to be meaningless to the average consumer, thus having no conceptual similarity.
    • Overall Impression: Despite some aural similarity, the Adjudicator concluded that the marks were dissimilar overall primarily due to the significant visual differences.
  • Goods Similarity: The Applicant’s counsel conceded that their Class 9 goods (computer software, programs, computers) were similar to Apple’s goods.
  • Conclusion on Confusion: Because the marks were found to be overall dissimilar, the ground for likelihood of confusion failed. The Adjudicator noted in passing that factors like the high visual dissimilarity, the nature of the goods (often commanding greater care from consumers), and insufficient evidence of actual confusion also weighed against a finding of confusion.
• Passing Off: This ground requires proving goodwill, misrepresentation, and damage. Since the tribunal found the marks dissimilar and no likelihood of confusion under Section 8(2)(b), the necessary element of misrepresentation could not be established. Therefore, the passing off ground failed.
• Well-Known Marks: Proving that a mark is well-known in Singapore requires demonstrating recognition by a relevant sector of the public. However, like Section 8(2)(b), this ground also has a threshold requirement of marks-similarity. As the marks were found to be dissimilar, this ground of opposition failed.
• Bad Faith: Bad faith involves dishonesty or commercially unacceptable conduct. Apple alleged the Applicant knew of their marks and intended to leverage Apple’s goodwill. However, the Adjudicator found no proof that the Applicant’s conduct was dishonest or commercially unacceptable. Mere knowledge of an earlier mark does not automatically constitute bad faith; something more is needed. There was no evidence of an improper motive established. This ground failed.

Significance for Your Business

This case, despite involving a global giant, provides practical lessons for businesses of all sizes:

• Visuals are Powerful: The significant visual differences between the marks were key to the decision. While aural similarity is considered, how a mark looks can be the dominant factor in determining overall similarity and preventing confusion. Businesses should consider the entire visual impression of a competitor’s mark.
• Overall Impression vs. Dissection: Consumers generally view marks as a whole, not by dissecting them into individual components. The tribunal assessed the Applicant’s mark as a complete unit.
• Distinctiveness is Contextual: Even a very famous word like “APPLE” might have a limited level of inherent technical distinctiveness when used as a trade mark, which can affect how broadly protection extends against different marks.
• Marks Similarity is a Threshold: For common opposition grounds like likelihood of confusion and well-known marks, you must first prove that the competing marks are legally similar. If you fail at this initial step, the opposition is likely to fail regardless of other factors like goods similarity or reputation.
• Bad Faith Requires More Than Knowledge: Simply knowing about a competitor’s trade mark when filing your application is typically not enough to prove bad faith in Singapore. You need to show an intent to deceive the public or other dishonest, commercially unacceptable conduct.
• Consumer Care Level Matters: For goods like computers and software, consumers are often expected to exercise a greater degree of care and attention due to the technical nature and cost involved. This higher level of attention can make confusion less likely.

In summary, the Apple v Penta Security case underscores that trade mark law is a nuanced area. Successfully opposing a competitor’s mark requires navigating specific legal tests and, crucially, being able to demonstrate sufficient similarity between the marks in question. Businesses need to carefully assess the visual, aural, and conceptual aspects of potentially conflicting marks and understand the specific requirements for each ground of opposition when seeking to protect their brand.

Note: At the time of this post, the decision of the tribunal is on appeal to the High Court of Singapore.