Apple has failed to stop an inventor from registering the trademark DRIPHONE in relation to waterproof smartphone 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 smartphones, using the trademark DRIPHONE. Apple opposed Crowther's trademark on a number of grounds, including that it was confusingly similar to its well-known mark IPHONE, and claimed that Crowther's use of DRIPHONE amounted to passing off. 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 issued by the Intellectual Property Office of New Zealand, Assistant Commissioner Jane Glover held that Crowther's mark was unlikely to be confused with Apple's IPHONE mark. While she accepted that the "implicit reference" to the IPHONE mark could have been a factor that influenced Crowther to choose the mark DRIPHONE, it did not follow that consumers were likely to be confused or misled.

The assistant commissioner accepted 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'. The assistant commissioner stated:

"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 that 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. She held that the prefix 'dri-', when used in connection with waterproof products, was likely to reinforce the concept of 'dry' in consumers' minds and thus differentiate it from the IPHONE marks.

The assistant commissioner directed that Crowther's mark be accepted for registration (in the absence of an appeal) and awarded him NZ$2,950 in costs.

For further information on this topic please contact Stacey Wood or Jonathan Aumonier-Ward at AJ Park by telephone (+64 4 473 8278), fax (+64 4 472 3358) or email (stacey.wood@ajpark.com or jonathan.aumonier-ward@ajpark.com). The AJ Park website can be accessed at www.ajpark.com.