iPad, Mi Pad, Your Pad?

Apple has successfully opposed Xiaomi, Inc.’s EU trade mark application for the word MI PAD in Classes 9 and 38 in the General Court ruling in T-893/16.

In 2014, Xiaomi, Inc. filed an EUTM application for the word mark MI PAD, which was opposed by Apple on the basis of its earlier mark IPAD which covers goods and services in Classes 9 and 38. The EUIPO Opposition Division upheld the opposition on the basis of likelihood of confusion. The Applicant Xiaomi, Inc. filed an appeal with the Board of Appeal, which was dismissed. The Board of Appeal found that the marks were visually and phonetically highly similar and conceptually similar insofar as the English speaking part of the public in the EU. In addition, given the identity and similarity of the goods and services covered by the marks at issue, and taking a global appreciation of all the relevant factors, the Board of Appeal concluded that there would be a likelihood of confusion. The Board of Appeal held the relevant public would think that MI PAD was a variation of the earlier mark IPAD.

The Applicant appealed this decision to the General Court. The General Court has agreed with the Board of Appeal and its reasoning that the marks were similar. The General Court noted that whilst the element PAD would be considered “weakly distinctive” for the relevant goods and services in Classes 9 and 38, it agreed with the Board of Appeal that the term would have a normal to high level of distinctive character in part of the EU where English is not understood. Given the degree of similarity between the marks and the identical or similar nature of the goods and services concerned (this point was not in contention), and noting that the level of attention of the relevant public would be above average for some goods and services, the General Court concluded that it could not exclude the possibility that the public might believe the goods and services in question come from the same, or an economically linked, undertaking. The General Court therefore also dismissed this appeal.

It possibly does not come as a surprise for most readers that the General Court upheld the Board of Appeal’s decision in this matter. Xiaomi could appeal this decision to the CJEU but the author suspects it will not because the reasoning in the General Court’s decision is sound. Nonetheless, readers should be reminded that success in an opposition does not legally compel the losing party also to stop using the mark in question. In this instance, we have noted that the Applicant Xiaomi, Inc. is still using the mark MI PAD in relation to its products being sold in countries of the EU, e.g. in the UK here. It will be interesting to see if Apple takes action against this use.

Finally, this is merely one of a number of ongoing disputes around the world between Apple and Xiaomi. In Singapore, in the case Apple Inc. v Xiaomi Singapore Pte Ltd [2017] SGIPOS 10, the Registry decision favoured Xiaomi, and permitted registration of the mark MI PAD for goods and services in Classes 9 and 38. The Registry found that the word PAD is less likely to be associated with any of the concerned parties, being a general term used for tablet computers. Although IPAD was incorporated entirely in MI PAD, the Registry in Singapore ruled that MI PAD does not capture the distinctiveness of the earlier mark, which is the prefix I with PAD. The Registry held that the prefix I in IPAD is used in almost all of Apple’s products, where the prefix I is combined with a general and descriptive term, e.g. phone or pod, making it “very unlikely” for the mark MI PAD to be confused with IPAD. The context of this decision is important, given Xiaomi’s enormous reputation in the Far East, where it is often branded as MI (see here and here).

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