Trademark dilution is like death by a thousand cuts, and it is crucial to prevent the first cut. Apple’s smart business strategies have successfully upheld the validity of its trademark, preventing it from being diluted.

Apple has become one of the largest companies globally due to its strategic use of intellectual property rights. This success is largely attributed to Apple’s effective trademarking of various designs and sounds related to its products and services. Notably, Apple trademarked its store design in the United States in 2011. The U.S. Patent and Trademark Office recognized that this distinctive glass store design sets Apple stores apart from other retail establishments.  To comprehensively protect its store designs, Apple has also secured design patents for the glass panels of the building and the staircase design.

Apple’s multiple trademark oppositions and IP Litigation worldwide has become a part of its broader strategy to maintain exclusive rights to the “Apple” icon and term. Apple could argue transborder reputation, asserting that its brand’s recognition and reputation extend beyond national borders.

Cracking the Code: What Sets Apple’s Trademark Apart?

• Inherent Distinctiveness: The Apple logo and brand name are inherently distinctive due to their unique design and association with the company’s products, such as iPhones, iPads, MacBooks, etc. The logo, consisting of a stylized apple with a bite taken out of it, is instantly recognizable amongst the consumer base and needs no introductions amongst the market & trade channels.
• Acquired Distinctiveness: Over the years, Apple Inc. has invested heavily in marketing and brand promotion, making its trademark well-known to consumers. This acquired distinctiveness strengthens its legal protection as a trademark.
• Non-generic Use: The term “Apple” is not generic when used in connection with electronic devices and related services. It doesn’t describe the product itself but rather serves as a brand identifier.
• Prior Registration and Use: Apple Inc. has a history of prior registration and extensive use of its trademark in India, which further solidifies its distinctiveness and exclusivity in the market.
• Transborder reputation and goodwill: Apple has achieved transborder reputation and goodwill through global presence, marketing and advertising, brand loyalty and community, extensive legal protection in order to ensure there arises no dilution.
• Design Aesthetics: Apple is known for its minimalist and sleek product design. From hardware to software interfaces, Apple products have a distinctive aesthetic that appeals to consumers who value style and simplicity.
• Cultural Impact: Apple has had a significant cultural impact beyond just being a technology company. Its products have influenced art, design, and popular culture, further solidifying its place as a distinct and iconic brand.

Apple’s Aggressive Trademark Strategy: Pursuing Control Over the Apple Symbol

Apple’s efforts to control the market and monopolize the usage of the term “Apple” and the apple fruit symbol have been extensively reported. According to the WIPO’s records, as reported by The Wires, Apple has made umpteen actions in numerous IP authorities against applications or registered trademarks bearing some resemblance towards Apple, regardless of the actual threat posed.  This drive to claim IP rights over a common fruit highlights the global IP rights industry dynamics, where companies compete obsessively over trademarks they may not genuinely need.

This strategy pattern was identified by the Tech Transparency Project (TTP), an initiative of Campaign for Accountability, a non-profit watchdog organization that uses research, litigation, and aggressive communications to expose misconduct and malfeasance in public life. The investigation reveals that Apple has systematically targeted small businesses and nonprofits across various unrelated sectors for potential trademark infringements. These small entities often face difficult choices, including exorbitant legal expenses, when confronted with such challenges.

The TTP’s investigation highlighted that Apple’s trademark enforcement is more aggressive than other major tech companies. In a three-year span (2019-2021), Apple filed 215 trademark oppositions, surpassing the combined total of Amazon, Google, Microsoft, and Facebook, which collectively filed 136.

Instances of Trademark Oppositions and Infringement

The Apple Corps Ltd v Apple Inc 2016 lawsuit underscores the importance of intellectual property protection and its legal and financial ramifications. A 1991 coexistence agreement allowed Apple Computer to use “Apple” for tech products and Apple Corps for music-related works. However, the rise of iTunes and iPod blurred these lines, leading to a dispute. In 2007, Apple Inc. settled by paying Apple Corps and securing rights for music-related uses of the Apple logo.

The Consequences of Apple’s Over-Litigation on Small Businesses

Apple issued a 283-page notice opposing the trademark application of “PaperApple”, a small design firm in Minneapolis, dealing with greeting cards, custom stationery, and notebooks. Founded by Liz Apple and Natalie Helling, the name “PaperApple” was a playful nod to Liz’s surname. The founders were shocked by the opposition, as their business in no way competes with Apple.

Apple challenged the trademark application of “Pineapple Live”, a live music event company, arguing on 2 grounds, namely that the name could cause public confusion and Trademark Dilution. Consequently, they withdrew its application. In another case, a company sought to register a logo for an app with a stylized fruit image, labeled “Citrus.” Apple argued this design as well. These incidents highlight Apple’s rigorous efforts to protect its trademarks against potential dilution and confusion.

Iconic Apple Logo Sparks Legal ongoing Battle Between Swiss Farmers and Apple Inc.

Apple has initiated a trademark dispute against Fruit Union Suisse, a 111-year-old farmers’ organization using a red apple with a white cross as its emblem. Swiss farmers argue they should be allowed to use an apple in their logo, emphasizing Apple Inc. did not invent the fruit and that a growers’ association should rightfully be allowed to use an apple in its logo.

Indian Jurisprudence

In Apple Computer Inc. vs Apple Leasing & Industries, 1993 IPLR 63 (Del.), in 1986, the applicant became aware of the respondent using the name “Apple Leasing and Computers Limited,” implying a connection with Apple. After issuing a cease and desist notice, the respondent changed its name but continued to imply an association with Apple through advertising. At the time, Apple Computer Inc. had applied for, but did not yet have, a trademark registration for the word ‘Apple’ or the Apple logo and was not actively trading products in India. However, the Delhi High Court rejected this contention and ruled in favour of Apple, granting an injunction to the respondent.

Apple’s Trademark Battles: Notable Legal Defeats

Beyond the Apple: Apple’s Trademark Dispute with Pear Technologies

Apple has extended its trademark litigation efforts to other fruit-themed logos, notably launching a dispute with Pear Technologies Ltd. which filed for trademarks with the EU trademark authority. Their logo featured the outline of a pear with a few rounded cubes inside, presented in black and white. The Board of Appeal upheld Apple’s opposition, concluding that there was a likelihood of confusion and potential exploitation of Apple’s well-known mark due to the conceptual similarity between the logos. However, the Court of Justice of the European Union (CJEU) disagreed with this assessment and annulled the Board of Appeal’s decision. The CJEU clarified that there is no significant similarity between the conflicting marks and figurative elements of the logos were also different, negating the likelihood of confusion.

Apple’s unsuccessful attempt with “MACLOGIC”

The Japan Patent Office (JPO) dismissed Apple’s opposition to the trademark registration of “MACLOGIC.” The JPO found the mark dissimilar to Apple’s “Mac” regarding visual, phonetic, and conceptual aspects. Additionally, the services offered under “MACLOGIC” (EC consulting and SNS marketing) differ from Apple’s trade sectors.

Conclusion- Transborder Reputation and the challenges

Apple raises numerous oppositions and infringements globally as a part of its overarching strategy and to have the monopoly on the icon and term APPLE. Apple could argue transborder reputation, asserting that its brand’s reputation transcends national borders, highlighting that trademarks having resemblance would lead to likely of confusion and Trademark Dilution. However, on the other side, under the Trade-Related Aspects of Intellectual Property Marks Agreement, Article 16.3 mandates protection for well-known trademarks. If a similar or identical trademark is used on different goods or services in a manner likely to confuse consumers and harm the trademark owner’s interests, only in such cases legal action is permitted under Article 6bis to safeguard the owner’s rights. This poses a challenge to Apple’s existing strategy of enforcement efforts amidst its global operations. Apple’s clever move of protecting its various intellectual properties have led it to become the tech giant that it is today, creating transborder reputation and brand value.

Written by Sarah Wilson & Helan Benny (Intepat Team)