Are these marks confusingly similar? 
 

ABS-CBN (Three Circles Device & Variants)	Apple (Podcast Icon)

No, according to the Director General of the Intellectual Property Office of the Philippines (IPOPHL) in the case of ABS-CBN Corporation v. Apple Inc. in Appeal No. 14-2022-0044, IPC No. 14-2020-00186, issued on January 17, 2024.

ABS-CBN was the largest media company in the Philippines and one of the oldest commercial television broadcasters in Asia until it was forced in 2020 by the National Telecommunications Commission to stop free-to-air broadcasting due to the lack of congressional franchise. With the shutdown, ABS-CBN transformed itself into a mass content company and produced television programs, films and other entertainment content in partnerships with other companies and broadcasters. According to reports, its YouTube channel is the most-subscribed and most-viewed channel in Southeast Asia, with over 45 million subscribers and over 50 billion views.

Who has not heard of Apple? One of the largest American technology companies and known for its consumer electronics, software and services, e.g., iPhone, iPad, Mac and Apple Watch; as well as software like iOS, iPadOS, macOS, watchOS, tvOS and visionOS; and services such as iCloud, Apple Music, etc.

ABS-CBN owns several trademarks as shown above registered in 2005, 2012, 2015, 2016 and 2017, covering such services as radio and television broadcasting networks, satellite communication in Class 41, for broadcasting services and internet in Class 38, for broadcasting services, and for the goods apparatus for receiving of audio and video transmission under Class 09.

Apple Inc. designated the Philippines to register the mark  for use on Class 9 goods namely, “Computer software for use in searching, browsing, purchasing, subscribing to, downloading, streaming, listening to, storing, organizing, sharing, creating playlists of, reviewing, and rating podcasts and other audio, video, and multimedia content; downloadable podcasts featuring audio, video, and other downloadable multimedia broadcasts in the fields of music, television, film, books, news, concerts, radio, sports, games, cultural event, and entertainment-related and educational programs” under application No. M-1-1425790 filed on July 20, 2018. ABS-CBN opposed this application on the grounds that: (i) the marks are confusingly similar enough to confuse the relevant market and connect Apple’s mark to ABS-CBN, (ii) the goods are similar and related (iii) the goods of Apple are within its natural expansion of business (iv) the marks are well-known, (v) Apple violated an earlier settlement agreement with Apple.

Apple argued that it has trademark registrations for variations of its Podcast Icon “” marks in the Philippines and that ABS-CBN never objected to the registration of these marks. The appellee highlighted that it launched its first ever Podcast Icon in 2005 in connection with its world-famous iTunes store and that the icon was used to represent the podcasting library in Apple’s iTunes 4.9 version. Apple maintained that in all the years of coexistence in the market as well as in the trademark registry, there has been no instance of consumer confusion between its various Podcast Icons and ABS CBN’s marks. Therefore, in view of the coexistence of their marks for over 15 years, it is highly unlikely that confusion will occur in the future.

The Bureau of Legal Affairs (BLA) of the IPOPHL dismissed the opposition and held that the competing marks are not confusingly similar due to the difference in presentation and the fact that ABS-CBN’s words are specifically shown as part of the marks, and given how these competing marks are encountered in the marketplace. According to the BLA Director, the Three Circle Device marks appear together with the house brand ABS-CBN such that both elements constitute the easily remembered earmarks of the brand, identifying the origin or source, thus any possibility of confusion disappears because of the differences in the device and the addition of said word element. In the case of Apple, it has only a device without any word element. The director explained that although both marks employ a circle device and a central vertical element, the presentation, style and colour scheme adopted are different.

As to the goods covered, the director held that they are distinct and non-competing to each other. Also worth considering is the sophistication of the consumers and the nature and cost of the products and services involved; that the ordinary purchaser of Apple’s mobile applications, computer and other devices is a discriminating buyer with at least a modicum of intelligence, and that the parties’ marks have been openly co-existing and that no evidence has been shown to support the claim of confusion or deception by ABS-CBN.

As to the alleged violation of the compromise agreement, the BLA Director further ruled that the marks involved in the compromise agreement are different from the mark being opposed and therefore, not binding on the current application.

The Director General affirmed the decision of the BLA Director and further noted that Apple has two registrations related to its Podcast icons granted by the IPOPHL in 2014 and 2017 under Class 9, shown below, which have co-existed in use and registration with the ABS-CBN’s marks,

and that there is no evidence that the public was confused or deceived with the co- existence of the marks. Finding no confusing similarity, the DG dismissed the appeal of ABS-CBN.