The Author,Yashwardhan Singh is a 5th year law student from Symbiosis Law School, Pune. He has keen interest in intellectual property laws.

Introduction

Trademarks are an important category of IP rights, both to businesses and consumers. A trademark helps in distinguishing between similar goods and services so that businesses can create a name for themselves and consumers can in turn make informed choices.

However, when there exists a situation of an unauthorized usage of a registered trademark or when an entity adopts a deceptively similar or identical mark, such an action would place a case for infringement of the registered trademark. Companies, thus, seek to actively protect their registered trademarks from infringement by others.

Yet, there are times when companies can go to unreasonable lengths in the guise of protecting their trademarks. This results in what is known as ‘trademark bullying’. A recent case in point is that of the tech giant, Apple and the young recipe and meal planning app, Prepear.

Background

In 2017, Super Healthy Kids, the parent company of Prepear, filed a trademark application for their minimalistic logo of a pear. In 2019, the US Patent & Trademark Office (USPTO) publicised the mark without any objections. On the last day of filing objections with the USPTO, however, Apple filed an objection against Prepear’s logo, citing a likely confusion to arise between the logos of the two companies due to a “blurring” between the two.

The founders of Prepear then took to social media and created a Change.org petition[1], expressing their fears of having to legally fight one of the world’s biggest companies. The petition stated that Apple has also previously opposed trademark applications for fruit-based logos created by small businesses, often leading to such harassment for the smaller businesses’ that they were forced to abandon or change the contested logos. 

The founders of Prepear further stated in their online petition that the legal costs of fighting Apple had already costed them tens of thousands of dollars and had led to the layoff of one of their employees. However, as stated by them publicly, the reason they maintain their stance to continue the legal battle against Apple is to stand up to the bullying by large companies such as Apple when it comes to similar bigger corporations enforcing their trademark rights.

Defining Trademark Bullying

What we see in light of the above facts amounts to a case of trademark bullying, a term which was defined by the USPTO in a report to the US Congress in 2011.[2] Trademark bullying happens when a trademark owner uses his/her rights in such a way as to cause a person or business harassment beyond what can be said to be legally enforceable.[3]

Trademark bullying is costly to the one being bullied. It can cost anywhere between $375,000 USD to $2 million USD in the United States for an entity to bear the costs of such litigation.[4] Since such cases happen most against individuals and companies who do not possess the adequate funds to fight the dispute in courts, they are indirectly forced to give up or change their marks completely. This can become quite detrimental to such small business owners in cases where they have considerably invested in promoting their brand through the disputed mark.

One such example is of Monster Energy, the energy drink company which has gained a reputation as a trademark bully for its aggressive strategy of coming after small companies with the word ‘Monster’ in their brand names.[5] The widely popular fast-food chain, McDonalds has also, in several instances, come after companies using the words ‘Mc’ or ‘Mac’ in their names, even if their businesses do not lie in the fast-food industry.[6]

In India, the Trade Marks Act, 1999 understands and addresses this issue. Under Section 142 of the Act, when a person is threatened with litigation for an alleged infringement of another’s registered trademark, the aggrieved person can obtain a declaration from the court stating that such a threat is unjustified.[7]

Analysing the Case of Apple v. Prepear

In the trademark dispute filed against Prepear’s logo, Apple has claimed that the impugned logo is likely to cause confusion in the mind of consumers, who might associate the minimalistic design of the pear fruit with that of Apple’s own logo.

Yet, if one chances upon the logo of Prepear, one can easily distinguish between it and Apple’s logo. While both logos are minimalistic and two-dimensional, Prepear’s logo is of a pear with a leaf pointing downwards outlined with a thick green border and a blank white space in the middle. In contrast, Apple’s logo is of a half-bitten apple which is devoid of any other colour apart from being completely black on a white background.

Thus, the colour scheme and the drawing style of both logos are different and easily distinguishable to the naked eye. Furthermore, Prepear and Apple’s businesses are neither similar nor do they produce similar goods, with the former being an application for cooking recipes while the later dealing in the creation, distribution and selling of electronic goods.

Conclusion

Trademark bullying is a persistent and prevalent problem emerging from large corporations. In the case of Apple and Prepear, the overzealous action of Apple stands to undermine the honest and diligent efforts of the young recipe app, Prepear. There exists a thin line of difference between what constitutes as trademark bullying and what constitutes a reasonable enforcement of one’s IP rights.

One cannot completely blame Apple though; the larger and more popular a company becomes, the more important it becomes for them to protect their IP rights lest another entity profit off of their fame and name. However, in doing so, such large companies must be wary of the bigger effect they would create when aggressively enforcing their IP rights.

Smaller businesses face the brunt of such aggressive actions and therefore trademark bullying is something which needs to be properly identified and dismissed by the courts so that innocents are not made to suffer on the basis of groundless accusations of infringement.

References:

[1] Save the Pear from Apple! End Apple's Aggressive Opposition of Businesses with Fruit Logos, Change.org, https://www.change.org/p/apple-save-the-pear-from-apple-end-apple-s-aggressive-opposition-of-small-businesses-with-fruit-logos?redirect=false, accessed August 23, 2020.

[2] Trademark Litigation Tactics and Federal Government Services to Protect Trademarks and Prevent Counterfeiting, Report to Congress, United States Patent and Trademark Office (April 2011).

[3] Ibid.

[4] 2013 Report of the Economic Survey, American Intellectual Property Law Association (August 2013).

[5] Drew Harwell, These students took on one of America's top trademark bullies — and won, Chicago Tribune (March 01, 2020), https://www.chicagotribune.com/business/ct-college-students-monster-trademark-20160301-story.html, accessed August 24, 2020.

[6] Brandon Selinsky, McDonalds Accused of Trademark Bullying, Whitcomb Selinsky PC (May 04, 2019), https://www.whitcomblawpc.com/blog/mcdonalds-accused accessed August 24, 2020.

[7] Section 142, Trade Marks Act, 1999 (India).

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Yashwardhan Singh