Deeksha Karunakar & Devarshi Singh
In today’s corporate ecosystem, companies often find themselves in an endless quest to stand out from their counterparts. Extensive research and development is carried out regarding each of their facets for the augmentation of the profitability and scalability of the brand. One such aspect that contributes to the uniqueness of the brand is the logo, which acts as a distinct emblem of the qualities and services provided by the brand. The logos are differentiated from each other based on their pattern, colour, size, design and other factors.
In a recent development, technological giant Apple Inc. lodged a composite lawsuit against Prepear, a budding company which can be used as a repository of recipes and help users make their meal plans using the app. Apple Inc. filed the suit on the grounds that the logo of the Prepear App bears a resemblance to its logo and creates a ‘similar commercial impression’. This news attracted widespread interest from all corners of the financial as well as legal world.
Basically, the logo is part of a trademark. A trademark is an identifiable sign or a pointer utilized by an individual or an association and is applied to the articles of trade in order to distinguish the items or services from those of its competitors. A mark of such products or services can incorporate a gadget, brand, heading, name, signature, word, letter, numeral, packaging, state of products, or mix of hues or any such blends et al. A trademark can be registered as well as unregistered. However, registration is not mandatory in India, but it is advisable to do so. The existence of trademarks can be traced back to 3000 years ago when craftsmen used to engrave their signature on their craft work. Its importance certainly grew by time and today it plays a crucial role in modern world industrialization. Each country implemented their own bylaws relating to intellectual property rights.
General Principle of Trademark and Misconception Relating to Trademark
The general principle of trademark and design that are globally recognized are:
- Each company, whether big or small, will register their trademark with the Government official, where the company is set up.
- The representation of the trade mark must be distinct in colour, pattern, shape, sound, word, design, scent and numericals from any other trademark.
- Each existing trade mark must be renewed after the time period mentioned in the respective country law. (For instance:- In India, for registered trademarks, the initial term of registration is for 10 years; thereafter it may be renewed from time to time).
The following are the few misconception regarding trademark:
- It does not necessarily give access to a right to utilize the name as a logo/label/signature whether you have qualified or registered for business under the name, or have registered the name in the assumed name records of a particular State.
- An individual is not entitled to utilize his name as a trademark or service mark.
- Registering as a trademark or service mark in the State of the mark does not necessarily indicate that it is legal for the registered owner to use the mark in any region of the world.
- An assignment of a mark, absent the goodwill of the business connected therewith, is invalid.
- If using anything other than a full trademark search performed by a professional searching service, you should be aware that the absence of an exact match for your contemplated mark in your search does not indicate that the mark is available for utilization or registration. Marks that may be similar in terms of appearance, sound, commercial impression or connotation, even if not exact matches, may conflict with your mark. Also, multiple common law databases should be checked by a skilled researcher.
- The fact that a label fits exactly in a search does not indicate that the mark can not be used or registered. If the conceptual mark seeks to establish a ‘fairness of ambiguity’, comprising the contrast or correlation of similarities or relatedness of the products and services to which each mark will be applied, the resemblance of the marks in question, and a variety of other factors which the official examiners and the courts would be acknowledged.
Relation of the Principles With Prepear Case
Till now it has been discovered that Prepear and Apple are two distinct establishments. Both Prepear and Apple have their logos registered under the registration act of their respective countries. Prepear is a company started by a blogger whose actual trademark was in the shape of a strawberry. After achieving great success, they further developed this application in 2020, for guidance in making healthy children meals. Apple is a multi-technology company established in 1976. The famous bitten apple logo took over the manufacturing market over the years and entrenched it’s place over the world.
The distinction in logo is visually conspicuous and Prepear’s website by no means promotes or mentions Apple in any place or form. Apple Inc.’s primary contention was the logo’s ‘similar commercial impression’. Although, how can a company which is neither marketing Apple nor creating any kind of impression of Apple Inc., be held liable for infringement when they have not infringed any general principles of the Trademark.
This is not the first time Apple claims resemblance, the cases of the ‘identical fruits’ have a long history. Apple is only a representation of a bitten apple and not all the other fruits or vegetables in existence. Apple has built their reputation from the quality of its product, it is unlikely that any other company using fruit or vegetables as their logo will be mistaken to be associated with them.
Cases of the Fruits
Apple claims that the resemblance of the Prepear logo with the Apple logo, will make the consumers believe that Prepear is ‘affiliated’ or ‘endorsed’ by them. In 2018, the Apple v. APO case was based more or less on a similar issue. The APO International Co. Ltd., based in Taipei, Taiwan, registered a figurative trademark with a stylized fruit picture with the European Patent and Trademark Office (EUIPO). Apple claimed to be owning the figurative mark and also the word marks APPLE.
Another case on a similar issue was filed in 2005 by Apple against Victoria School of Business and Technology. In this case, Apple claimed that the logo used by Victoria School of Business and Technology had resemblance to their logo. The logo used by Victoria School of Business and Technology is shaped like an apple incorporating the mountain logo of the school’s sister company with the letters VSBT in the corner.
These are U.S. cases, but what happens if such cases occur in India? Will Indian laws recognize and uphold such claims?
Applicability of Such Cases in India
Indian laws in relation to trademarks are recognized under the Trade Marks Act, 1999 (hereinafter referred as ‘the Act’). The definition of trademark provided under Section 2(zb) of the Act, states that, “it means a mark capable of being represented graphically and which is capable of distinguishing the goods or services of one person from those of others may include shape of goods, their packaging and combination of colours”.
Considering the provisions of the Act, and the applicability of the case of Apple Inc. v. Prepear in Indian legal scenario, it is highly unlikely that Prepear has copied the trademark, since the logo of Prepear is distinct in its form of shape and colour as well as works in a different service field when compared with Apple.
India has also observed a fair share in cases when it comes to dispute on the basis of logo. One such case is M/S Mahashian Di Hatti ltd. v. MR. Raj Niwas, Proprietor of MHS Masalay. In this case, the plaintiff company is a business active in the manufacturing and selling of spices and condiments. The representative logo of the plaintiff business is registered as ‘MDH’ within three hexagon devices on a red colour background. This logo has been registered by the plaintiff since 1991. The defendant is said to be using a logo consisting of ‘MHS’ within three hexagon devices on a red colour background. The plaintiff filed an injunction suit against the defendant claiming the resemblance in their logo is malignant to the plaintiff’s reputation. The Delhi High Court found the defendant liable for the offence and the plaintiff was awarded Rs. 1 Lakh for punitive damages.
Another such case occurred in 2016, H&M Hennes & Mauritz AB Anr. v. HM Megabrands Pvt. Ltd. & Ors. In this case, plaintiff is a renowned fashion brand recognized in the international and national market and has many franchises worldwide. The Plaintiff purported that the defendant had infringed their trademark ‘H M’ by using the same color combination, i.e., red and white as well as the letters in their business. The defence claimed that the mark ‘H M’ is a representation for their directors and the usage of the mark was of innocent nature and further claimed that the plaintiff launched their business in India much later and has acquired a reputation in Indian market after a while. The Court held that, in case of a brand having a trans-border reputation it is not necessary for it to set up shop in India for its trademark to be protected in India. Hence, the defendant was restrained from utilizing the ‘H M’ mark or any other alternatives of the same.
The resemblance of a logo is based on the mere similarity between colour and shape of the two logos in question. In cases where such similarity is present, the original brand company utilizing the logo can file a suit against the other based on the trademark laws applicable in their country. However in the present case, the shape of a pear and the shape of an apple is clearly distinctive to one another, as well as the choice of colour. Apart from that, Apple claiming that Prepear’s logo is creating ‘a similar impression’ of their bitten apple is barmy. The previous cases filed by Apple Inc., evidently showcase that fruits are forbidden to be utilized by any other establishments as their logo. As a whole, this case study serves as yet another embodiment of the hazards of the lopsided corporate playing field.
Deeksha Karunkar is a student of Law College, Dehradun, and Devarshi Singh is a student of Government Law College, Mumbai.