The famous company Apple Inc is ready to take a ‘bite’ at Victoria School of Business and Technology. The dispute ‘centers around a piece of fruit‘. The ‘apple’ could be one of the most litigated issues in history.
The story begins in 1978 when Apple Corps, a recording company owned by The Beatles filed a lawsuit against Apple Computer [now Apple Inc] for a trademark infringement. The Beatles had used a green non-stylized apple as their logo long before Apple Inc created its famous apple with a bite. Although in 1981 the two companies signed an agreement, the issue was far from settled. The acrimonious legal battles continued for more than 20 years. In 2007 the companies finally agreed that Apple Inc. will own all of the trademarks related to the fruit apple and will license back some of the marks to Apple Corps for their continued use. That might have settled the issue for The Beatles but the fight over the ‘apple’ is far from over. In September, 2007, New York City faced a lawsuit by Apple Inc for using a stylized green apple as a logo for its environmental awareness campaign.
On August 26 this year the ‘apple fight’ has transferred onto Canadian land. In a letter, Apple Inc espoused that the logo of Victoria School of Business and Technology[VSBT] infringed Apple’s trademark. Apple Inc argued that it had the exclusive right to use its apple-design logos and restrain ‘activities that are likely to cause confusion among consumers regarding the source of related products and services’. The corporation threatened the school that it will take legal action unless VSBT abandons any use of the logo and permanently changes its design as to exclude the use of an apple.
In its written response, VSBT outlined several important differences between the two logos that were sufficient to avoid confusion. Firstly, the school’s logo incorporates the VSBT acronym as well as the symbol of a mountain that is part of the logo design of a VSBT’s sister company. Commentators had also noticed that the Apple’s apple has a bite on the right side while VSBT’s logo depicts a full apple. Lastly, although Apple Inc has its logo also registered in stripes of different colors, the palette of colors used in the VSBT logo is quite different.
Are those differences sufficient to avoid confusion between the two trademarks? S.6(5) of the Canadian Trade-marks Act lists a number of factors that a court should consider to determine confusion between two trademarks. Firstly, the court should evaluate the ‘inherent distinctiveness‘ of a trademark. In general, words that are commonly used in every day language are inherently less distinct and entitled to less protection than an entirely invented word or symbol, which by its nature is quite distinct. In this respect, very small differences are sufficient to distinguish marks that are not highly distinctive.
Under this first factor, VSBT could argue that the apple, as a piece of fruit, has become a commonly used symbol, embedded in our culture. Thus, logos incorporating an apple are inherently less distinct and are entitled to less protection; small differences in the logos are sufficient to differentiate them for the purpose of the Trade-marks Act. In support of this argument VSBT can argue that the apple has widely been accepted as a symbol of education in North America. There are at least a dozen educational organizations that use the apple symbol as part of their logo. Furthermore, many physics textbooks depict a tree with falling apples when explaining Newton’s law of gravity. Lastly, expressions related to apples such as: ‘Comparing an apple to oranges’, ‘An apple a day keeps the doctor away’, and ‘The apple does not fall far from the tree’ are well-embedded in the English language.
The second factor the court should analyze when determining confusing marks concerns the length of time the trademarks have been in use. This factor weighs in Apple Inc.’s favour, because it has used its logo for over 30 years while VSBT has started using its logo since 2005.
The third and fourth factors under the Trade-marks Act concern the nature of wares and services and the route taken to deliver such wares and services. On the one hand, it could be argued that confusion might arise because both companies are associated with computers and technology. If the logos of the two companies are too similar a student interested in computer education, for example, might think that VSBT is authorized by Apple Inc. It is interesting to note that Apple Inc has its logo registered for educational purposes related to the ‘operation and management of a group of people for the purpose of enhancing their knowledge of computer hardware and computer software‘.
Although such a scenario is possible, it is highly improbable. This conclusion is supported by General Motors Corp. v. Bellows, [1949] S.C.R. 678. Products [such as education] that are not purchased on a daily basis and are expensive require high degree of selection on the part of the consumer. Thus more ‘subtle differences’ between marks could be allowed since ‘consumers will not confuse them in the course of routine and often hasty shopping’ but will rather ‘take the time to choose the item and therefore the mark associated with it’
The final factor concerns the degree of visual resemblance between the trade-marks. I have outlined the visual differences above. I agree with VSBT that those differences are quite significant and a consumer is unlikely to visually confuse the two trademarks.
In conclusion, the analysis of the five factors in the Trade-marks Act shows that it is unlikely for a consumer to confuse the two trademarks. No matter how this dispute settles, given the growing popularity of Apple Inc’s products and the fact that ‘history tends to repeat itself’, the fight over the ‘apple’ is far from over.