Xiaomi, Inc filed an EU trade mark application for the word mark MIPAD in Classes 9 and 38. The application was opposed by Apple Inc., on the basis of their earlier EU trade mark for the word IPAD in the same classes.
The Opposition Division upheld the opposition in respect of all the goods and services covered. Xiaomi’s notice of appeal was dismissed by the First Board of Appeal. It considered that the marks were highly visually and phonetically similar and conceptually similar in the English speaking part of the EU, and conceptually neutral in the other parts of the EU. It concluded that despite differences between the marks, these were not sufficient to rule out the existence of a likelihood of confusion.
The General Court
The Applicant appealed. Before conducting a comparison of the marks, the Court first considered what should be regarded as the relevant public. It concluded that because the majority of electronic goods covered by Class 9 are now relatively inexpensive, have a relatively short life span and do not require particular technical knowledge, the average consumer’s level of attention ranged from average to high. This depended on the complexity and price of the goods and services concerned. Furthermore, the Court confirmed that the Board of Appeal were correct in finding the relevant territory was that of the European Union as a whole.
Comparison of the signs
Prior to conducting a comparison of the signs, the Court upheld the decision of the Board of Appeal in finding that the goods and services in question were identical in part and similar in part.
Dominant and Distinctive nature of the marks
The Court reiterated that each of the marks must be examined as a whole. In this regard, it confirmed that the marks did not contain any dominant elements and the common element, ‘pad’, could not be regarded as negligible nor purely descriptive. Moreover, ‘pad’ will be noticed visually and pronounced in each of the marks and would therefore have an impact on the overall impression given. The Court found that in addition to ‘pad’ being weakly distinctive, the elements ‘mi’ of the mark applied for and ‘i’ of the earlier mark were equally weakly distinctive. Indeed, it held that ‘mi’ may be understood as ‘my’ in English, whilst ‘i’ could be understood as referring to the internet.
Consequently, contrary to the Applicant’s arguments, the comparison of the marks at issue could not be limited to only the ‘mi and ‘i’ elements of the marks. The Board of Appeal was therefore correct to consider each of the marks as a whole.
The Court agreed with the Board of Appeal and stated that the only visual difference between the marks was the additional letter ‘m’ at the beginning of the mark applied for. Contrary to the Applicant’s arguments, the Court found that this difference was not capable of preventing the marks being visually similar overall. Therefore, a high degree of visual similarity was found.
As the marks each contain two syllables, pronounced with a similar intonation, and the second syllable ‘pad’ is the same in both marks, the Court held they only differed in relation to the first syllable. In this regard, the Court stated that the difference lies with the additional letter ‘m’. However, it agreed with the Board of Appeal in finding that whatever way the English-speaking part of the relevant public will tend to pronounce the letter ‘i’ it will pronounce it in the same way in both marks. As such, the presence of the letter ‘m’ in the mark applied for is therefore not cable of offsetting the overall phonetic similarity between the marks. It was therefore held that the marks display an average degree of phonetic similarity in the English-speaking part of the relevant public and a high degree of phonetic similarity for the non-English speaking part.
The Court stated that the relevant public would break down the marks into their two elements ‘mi’ and ‘pad’ and ‘i’ and ‘pad’. Consequently, it held that the marks at issued display an average degree of conceptual similarity for the English-speaking part of the relevant public. For the non-English-speaking part, the conceptual comparison remains neutral. It held that even assuming ‘mi’ is understood as ‘my’ and the ‘i’ element is understood as referring to the internet, those elements are only prefixes and the marks must be taken as a whole. As the prefixes are accompanied by the common element ‘pad’ which has no meaning for non-English speakers, the marks are ultimately devoid of conceptual meaning for that public.
Likelihood of confusion
The Court pointed out that the differences resulting from the additional letter ‘m’ at the beginning of the mark applied for were not such to remove a likelihood of confusion between the marks at issue. It went on to state that because of the high degree of visual and phonetic similarity and the identity or the similarity of the goods and services in question, a likelihood of confusion existed and was sufficient to prevent the registration of the mark applied for. It held that although the level of attention would be above average for some of the goods, this is not sufficient to exclude the possibility that the public might believe the goods came from the same undertaking. In addition, the weak distinctive character of the earlier trade mark did not remove the likelihood of confusion here.
Case Reference: T-893/16