Apple has failed to stop a Hamilton inventor registering the trade mark DRIPHONE in relation to waterproof smart phone covers in New Zealand. The decision suggests that because Apple has created such a strong association between the 'i' prefix and its goods, consumers are more likely to notice minor differences between Apple's 'i' marks and other marks, including DRIPHONE.

Hayden Crowther sells waterproof cases for iPhones and other devices including Android smart phones, using the trade mark DRIPHONE.

Apple opposed Mr Crowther's trade mark on a number of grounds including that it was confusingly similar to its well-known mark IPHONE, and claimed Mr Crowther's use of DRIPHONE amounted to passing off. Mr Crowther's business used the IPHONE marks on its website - for instance, in the context of advertising DRIPHONE products suitable for use with various IPHONE models.

Apple failed on all grounds. In a decision released this week by the Intellectual Property Office of New Zealand, Assistant Commissioner Jane Glover held Mr Crowther's mark was unlikely to be confused with Apple's IPHONE mark. While she accepted the 'implicit reference' to the IPHONE mark could have been a factor that influenced Mr Crowther in choosing the mark DRIPHONE, it did not follow that consumers were likely to be confused or misled.

The Assistant Commissioner accepted Mr Crowther's submission that consumers were likely to recognise the difference between the prefix 'i' which is often used in reference to internet or other smart technology, and the prefix 'dri-' which was a phonetic spelling of 'dry'.

"My overall impression is that the opposed mark is not similar to the opponent's iPhone trade mark, especially as the 'phone' element of the mark which is common to both marks is highly descriptive. The prefix 'dri' looks and sounds quite different from the prefix 'i'. I agree with the applicant that consumers will view the mark as DRI-PHONE (especially when used in relation to waterproof goods)."

Apple submitted evidence showing it had a family of marks incorporating the 'i' prefix, including IMAC, IPHOTO, and IBOOK. The Assistant Commissioner said that in this context, the use of 'dri-' instead of 'i' took on even more weight in differentiating the two marks.

"In particular, I am influenced by the opponent's evidence that it has deliberately educated consumers over many years to associate the 'i' prefix with its family of trade marks."

Since both marks contained the descriptive suffix 'PHONE', the Assistant Commissioner placed more weight on the prefixes of each mark. The Assistant Commissioner held the prefix 'dri-', when used in connection with waterproof products, was likely to reinforce the concept of 'dry' in consumers' minds, and differentiate it from the IPHONE marks.

The Assistant Commissioner directed that Mr Crowther's mark be accepted for registration (in the absence of an appeal), and awarded him $2950 in costs. Apple has until mid-January to appeal the decision.