What a distinction an 'M' makes in battle of tablets

Principal assistant registrar of trademarks Tan Mei Lin ordered the registration for ''MI PAD'' to proceed.
Principal assistant registrar of trademarks Tan Mei Lin ordered the registration for ''MI PAD'' to proceed. PHOTO: XIAOMIa

Chinese firm can now register its 'MI PAD' after Apple fails in bid to block its move

Chinese smartphone maker Xiaomi has won the move to register its trademark "MI PAD" here for its computer tablet products after a Singapore registrar overruled strong objections from rival Apple to protect its "IPAD" mark.

Principal assistant registrar of trademarks Tan Mei Lin, in noting the "MI PAD" name was independently derived from Xiaomi's own housebrand, held the rival mark was not similar on the whole.

"If I were wrong in this and were to accept that there is marks-similarity, I would be inclined to say the (MI PAD) mark is only marginally more similar to the 'IPAD' mark.

"Hence, this factor in the likelihood of confusion lies in (Xiaomi's) favour - the lesser the similarity between the marks, the lower the likelihood of confusion," said Ms Tan in decision grounds last week.

Xiaomi Singapore, backed by parent company Xiaomi Inc whose products include Mi 1 and Mi Note, had applied to register the "MI PAD" mark in 2014 for tablet computers, among other items.

Products by Apple include the iPhone, iMac, and iPod, among others. For the current proceedings in particular, their tablet computers are sold under the "IPAD" mark, which was registered as a trademark in Singapore in 2010 for various goods and services indicated.

Both parties came to the May 8 hearing before the registrar on the back of stellar records.

Xioami is one of the world's fastest-growing smartphone companies and most valuable start-ups, with a valuation of about US$45 billion (S$61 billion) as at 2014, noted Ms Tan. US-based Apple is a world-leading manufacturer of mobile communication and media devices, she added.

The company relied on its earlier "IPAD" mark registration and added it had also successfully opposed Xiaomi's application in several jurisdictions such as the European Union, China and Australia.

At issue was whether the marks were similar in terms of overall impression, whether the goods or services for which registration is sought are similar and whether there is a likelihood of confusion arising from the similarities.

Apple's lawyers Lim Ren Jun and Nigel Bay argued among other things that the marks had strong visual similarity because all the letters of the "IPAD" mark are found in Xiaomi's application mark, in the same sequence.

But Xiaomi's lawyers Regina Quek and Shawn Poon countered that letters common in both should not lead to an automatic finding that the marks are visually similar.

They added the common element in both marks is the word "pad" which is descriptive and non-distinctive and would therefore be given little weight by consumers who will look to other parts of the marks which are distinctive.

Ms Tan, who ordered the registration for "MI PAD" to proceed, said: "Having considered all the pleadings and evidence filed and the submissions made in writing and orally, I find the opposition fails on all grounds."

A version of this article appeared in the print edition of The Straits Times on August 18, 2017, with the headline 'What a distinction an 'M' makes in battle of tablets'. Print Edition | Subscribe