Apple Inc. (Opponent), a global technology frontrunner with over 525 retail store locations including Singapore, lost in its opposition bid against the registration of the application mark Wapples by Seoul-based Penta Security Systems Inc. (Applicant).

Penta, a provider of web and data security products, solutions and services, applied for the Wapples trademark (Application Mark) on December 3, 2021, under Class 9. This covers the following: recorded computer software, recorded computer operating programs, recorded computer programs, computers and computer memories. Under the Wapples trademark are security solutions for web applications and APIs. Launched in 2005, these products entered the Singaporean market in 2010.

According to Apple, the Wapples mark is similar to its very own Apple. The company based its grounds of opposition on Section 8(2)(b), Section 8(4)(b), Section 8(7)(a) and Section 7(6) of the Trade Marks Act 1998.

Apple’s opposition failed on all grounds including visual, aural and conceptual similarity.

The ground of opposition under section 8(2)(b) 13 Section 8(2)(b) of the act reads: (2) A trade mark shall not be registered if because — … (b) it is similar to an earlier trade mark and is to be registered for goods or services identical with or similar to those for which the earlier trade mark is protected, there exists a likelihood of confusion on the part of the public.

Apple’s earlier trademarks (Earlier Marks) are Trade Mark No. T8201324F (Application Date: March 16, 1982), Trade Mark No. T0804669A (November 1, 2007), Trade Mark No. T0003686G (March 9, 2000) and Trade Mark No. 40201723888P (September 29, 2017).

Apple relied on the relative grounds of opposition on Trade Mark No. T0804669A as the primary mark. “This does not detract from its reliance on the remaining Earlier Marks listed above but provides a ready reference point,” Intellectual Property Office of Singapore principal assistant registrar Sok Yee See Tho wrote in her legal decision.

On the marks’ visual similarity, See Tho said that Trade Mark No. T8201324F stands out among the Earlier Marks with its stylization and is even more visually distinguishable from Wapples.

On their aural similarity, See Tho considered the aural distinctiveness of the Opponent’s Earlier Marks. She said: “The aural element of the Apple mark, as pronounced, does not have a higher than average level of inherent technical distinctiveness. It would be fair to accord it an average, medium level of inherent technical distinctiveness, aurally speaking. It therefore does not enjoy ‘a high threshold before a competing sign will be considered dissimilar to it’ aurally. Overall, whether qualitatively or quantitatively, I am not persuaded that the competing marks are aurally similar.”

Further, Apple stated that the concept of the Earlier Marks is that of the fruit – the apple. According to the tech company, the application mark evokes the same concept since it contains the letters A-P-P-L-E-S. Thus, Apple believed there was a conceptual similarity between Apple and Wapples. However, Penta stated that Wapples is merely an invented word that carries with it no meaning.

“The Opponent’s Earlier Marks have a medium level of conceptual inherent technical distinctiveness in relation to the Class 9 goods claimed. There is therefore no ‘high threshold’ to be crossed before another mark is considered distinguishable from it. In any case, Apple and Wapples are totally conceptually dissimilar,” explained See Tho.

As for Section 8(4), See Tho said the condition relating to marks-similarity is worded as “the whole or an essential part of the trade mark is identical with or similar to an earlier trade mark.” In her legal decision, she wrote that she found that under Section 8(2)(b) the Application Mark and the Earlier Marks are neither similar nor identical. She added that in this dispute, it cannot be said that “the whole or an essential part of the Application Mark is identical with or similar to the Earlier Marks.” Thus, the ground of opposition under Section 8(4) fails.

Apple’s ground of opposition under Section 8(7)(a) also fails. See Tho found the competing marks to be neither similar nor will these cause confusion among consumers. Therefore, Apple would not establish the element of misrepresentation under Section 8(7)(a).

Lastly, the ground of opposition under Section 7(6) – which reads, “A trademark must not be registered if or to the extent that the application is made in bad faith” – fails as well. According to See Tho, Apple failed to prove that Penta acted in bad faith.

“To my mind, even if the Applicant were aware of the Earlier Marks at the time [these were] conceived, it is difficult to see how the choice of the Application Mark ‘would be considered as commercially unacceptable by reasonable and experienced persons’ in the trade. The Application Mark is an invented word, and is, on its own merit, distinctive and dominant as a whole. The fact that it contains the letters A-P-P-L-E is incidental and does not offend the sensibilities of ordinary persons adopting proper standards,” explained See Tho.

See Tho’s decision also ruled out a reasonable likelihood of confusion. “The strong reputation of the Opponent’s Apple in its Earlier Marks leans away from a finding of confusion; and the nature of the goods in issue, such as computers and computer software, tends to involve a considered process of selection and purchase on the part of consumers such that confusion is less likely to occur,” the decision read.

“Having considered all the pleadings and evidence filed and the submissions made in writing, I find that the opposition fails under all grounds. The Application Mark may proceed to registration,” See Tho concluded.

- Espie Angelica A. de Leon