The Intellectual Property Office of the Philippines (IPOPHL) recently rejected an opposition filed by Apple, Inc., against the trademark MY/PHONE.
Solid Broadband Corporation (SBC) filed an application for MY/PHONE for use on “distribution and sales of mobile and cellular phones including chargers, headsets, micro SD CARDS, T-flash cards, extra phone batteries and stylus pens” in Class 9.
The opposer, Apple, Inc., anchored its opposition on the strength of its world-famous IPHONE mark and related marks, which are used in connection with its state-of-the-art smartphone and other electronic devices such as mobile phones, computer products and other products in Class 9. It claimed that the contending marks IPHONE and MY/PHONE are identical, leading to confusion and deception of the public.
Emphasizing that "my/phone" is pronounced as "mi-phone" and sounds exactly like "IPHONE," the opposer pointed out that the presence of the element "/" in "my/phone," which looks like a slanted letter "I" makes “my/phone” identical to “IPHONE.” The opposer further relied on the extensive use of “IPHONE” worldwide and its robust media presence globally.
The respondent, SBC, is a broadband service company which positions itself to be the largest provider of multimedia services in the Philippines, targeting budget conscious Filipinos. Launched in 2007, its first mobile phone under the MY/PHONE brand is the country’s first dual active SIM phone. Having started with three mobile phones, SBC now markets and sells over forty models of mobile phones under the MY/PHONE mark.
The respondent claimed that the MY/PHONE brand had generated substantial goodwill in the market, particularly among ordinary mobile phone users, and had even become commonly known by Filipinos as a “Pinoy Phone.” “Pinoy” is an informal term used by Filipinos to denote people with roots in the Philippines.
SBC presented its sales, promotional materials and celebrity endorsements. Not contented, SBC countered that this was a case of a “giant trying to claim more territory than what it is entitled to, to the great prejudice of a local ‘Pinoy Phone’ merchant.”
The Bureau of Legal Affairs (BLA) of IPOPHL found no confusing similarity between the contending marks IPHONE and MY/PHONE. The presence of the word “PHONE” in both marks was not sufficient to conclude that confusion among consumers will occur. “PHONE” is a generic term for mobile phone products and one cannot gain the exclusive right to appropriate this term given that the marks are used in mobile phones.
The BLA confined its scrutiny to the respondent’s words “I” and the word “MY.” It found that there was a striking difference between the words “I” and “MY.” One is a vowel while the other is a combination of two consonants. “MY” is an adjective which connotes “relating or belonging to me.” On the other hand, the opposer’s “I,” when used on its products, is unique, the meaning of which is left to the imagination.
Mobile phones belong to a type of consumer goods where brand patronage is prevalent. The fame of the Apple iPhone makes it improbable for one to confuse MY/PHONE products with IPHONE products. In sum, “IPHONE” is not “MY/PHONE.”
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© 2015 International Trademark Association