Yesterday, the European Court of Justice ruled on a long-standing trademark dispute between Apple and the Chinese electronics company Xiaomi. The Chinese competitor may not register the name “MI PAD” for his tablet computers as Union word mark as desired.
Xiaomi applied for registration as Union word mark
Xiaomi introduced his tablet computer in 2014 and named it “Mi Pad” from the very beginning. The Chinese company had applied to the European Union Intellectual Property Office (EUIPO) for registration of the Union word mark “MI PAD” (No. 12 780 987) for a large number of electronic devices, in particular tablets, e-book readers and digital audio and video players. The U.S. company Apple appealed against this and argued that its earlier union trademark IPAD was opposed to registration.
EUIPO denied trademark registration
However, the EUIPO had rejected the restitution, which was confirmed by the EUIPO First Board of Appeal on 22 September 2016 (R 363/2016-1). The differences between the two signs were not sufficient to exclude the existence of a likelihood of confusion. There is therefore a risk that the MI PAD mark would be considered to be a modification of the IPAD mark.
Xiaomi then filed an action on 19 December 2016 for annulment of the decision against EUIPO, with Apple as party to the proceedings before the Board of Appeal (Case T-893/16). Yesterday, the European Court of Justice (ECJ) ruled in favour of EUIPO and Apple. The Court recognised that the word mark was too similar to the registered Apple trademark iPad.
Sales stop of the Mi Pad possible
But for years now, the Chinese tablet has been sold in Europe under the name “MI PAD”, meanwhile in Germany in the version MI PAD 3, and Apple could now demand that Xiaomi stop selling the MI PAD.
Perhaps the last word has not been spoken yet. An appeal may be brought before the Court of Justice against this decision within two months. But so far it is a signal against trademark piracy.
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