EGC Denies Xiaomi, Inc., EU Trade Mark Registration for “Mi Pad”

By Paul Opitz

The Third Chamber of the General Court of the European Union (EGC) ruled on 5 December 2017 that the Chinese smartphone maker Xiaomi, Inc., may not register the EU word mark MI PAD for its tablet computers, since it is likely to be confused with Apple’s iPad. (Xiaomi, Inc., v. European Union Intellectual Property Office, Case T-893/16)

 

Procedural background

In April 2014, Xiaomi, Inc., (Xiaomi) filed an application for registration of an EU trade mark with the European Union Intellectual Property Office (EUIPO) to register the word sign MI PAD. Registration was sought for Classes 9 and 38 of the Nice Agreement concerning the International Classification of Goods and Services, which correspond to the descriptions of inter alia portable and handheld electronic devices and telecommunication access services.

In August 2014, Apple Inc., (Apple) filed a notice of opposition to registration of the mark in respect of all the goods and services in the applied classes. The opposition was based on Apple´s earlier EU word mark IPAD, which was filed in January 2010 and registered in April 2013, covering goods and services in the same classes. The relative grounds relied on in the opposition were those of identity with, or similarity to an earlier trademark, currently set out in Article 8 (1) (b) of Regulation 2017/1001. This opposition was upheld by the Opposition Division in December 2015, which rejected Xiaomi´s application.

Thereafter, Xiaomi filed an appeal with EUIPO against the Opposition Division´s decision, which was again dismissed in September 2016 on the grounds that the marks MI PAD and IPAD were highly visually and phonetically similar and could lead to a confusion of the relevant public. This decision by the EUIPO was now contested by Xiaomi.

 

Decision of the General Court

First, the Court established some background on the scope of decisions concerning the relative ground of similarity. According to settled case law, the risk that the public may believe that goods come from the same undertaking or economically-linked undertakings constitutes a likelihood of confusion. Also, this likelihood must be assessed globally and taking into account all factors relevant to the case (Laboratorios RTB v OHIM – Giorgio Beverly Hills, Case T-162/01). For the application of Article 8 (1) (b) of Regulation 2017/1001, a likelihood of confusion presupposes both that the marks are identical or similar and that the goods which they cover are identical or similar (Commercy v OHIM – easyGroup IP Licensing, Case T-316/07).

 

The relevant public

The Court referred to the decision of the Board of Appeal and emphasized that the goods in question are aimed at both the general public and professional consumers with specific knowledge. Regarding the relevant public´s level of attention, the Court elaborates that although the purchase price of some goods covered by the mark are relatively high, most electronics aimed at the general public are, nowadays, relatively inexpensive and have short lifespans. Therefore, they do not require any particular technical knowledge and leave the level of attention between average and high. Secondly, the Court upheld the Board of Appeal’s finding that the relevant territory is the European Union as a whole.

 

Comparison of the signs

At first, the Court notes that a global assessment of the likelihood of confusion must be based on the overall impression of the signs, including the visual, phonetic, and conceptual similarity. In the case at issue, the comparison of the marks must be carried out by considering each mark as a whole, since there are no dominant elements. The Court holds that the marks are visually highly similar, since the earlier trade mark IPAD is entirely reproduced in the mark MI PAD. Moreover, they coincide as to the letter sequence “ipad” and differ only as to the presence of the letter “m” at the beginning. Phonetically, the marks are also highly similar, referring to the pronunciation of their common syllable “pad” and of the vowel “I”. The latter will be likely be pronounced as the first person singular possessive pronoun “my” in English and thereby similar to the “I” in Apple’s iPad. The Court clarifies that even minor differences in pronunciation due to the letter “m” are not capable to offset the overall similarities. Conceptually, the English-speaking part of the EU understands the common element “pad” as a tablet or tablet computer, which makes it only weakly distinctive and sufficient for a finding of similarity (Xentral v OHIM – Pages jaunes, Case T-134/06).

 

The likelihood of confusion

For determining the likelihood of confusion, the interdependences between the similarity of the marks and that of the goods covered must be examined. The court states that the visual and phonetic differences resulting from the presence of the additional letter “m” are not able to rule out a likelihood of confusion as a result of the overall similarities. Neither are the conceptual differences resulting from the prefixes “mi” and “I” sufficient to remove this likelihood created by the common element “pad”. Taking into account that the goods in question are identical, the conceptual similarities overweigh the discrepancies.

In conclusion, the Court could not exclude the possibility that the public might believe that both tablets come from the same undertaking or economically-linked undertakings. Hence, the Court rejected and dismissed the applicant’s plea in law.

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