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Dr. Kislay Pandey, SC lawyer discusses Apple v. Prepear case on Trademark Bullying 16 October, 2020   

Trademarks are a significant category of Intellectual Property rights, both to organizations and customers. A trademark helps in distinguishing between similar goods and services with the goal that organizations can create a name for themselves and consumers can 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 activity would put a case for infringement of the registered trademark. Therefore, companies seek to effectively shield their registered trademark from infringement by others.

And yet, there are times when companies can go to irrational lengths in the pretense of securing their trademark. This is what is called ‘trademark bullying’. A recent case in point is that of the tech giant, Apple and the young recipe and meal planning application Prepear.

In 2017, Super Healthy Kinds, the parent company of Prepear, filed a trademark application for their minimalistic logo of a pear. The US Patent and Trademark Office (USPTO) publicized the mark without any objections in 2019. However, on the last day of filing of objection with the USPTO, Apple filed an objection against the logo of Prepear, citing a likelihood of confusion to arise between the logos of the two companies due to a ‘blurring’ between them.

The founders of Prepear at that point took to social media and created a Change.org petition, expressing their apprehensions 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 small modest businesses that they were forced to abandon or change the challenged logos.

The founders of Prepear further expressed in their online petition that the legal expenses of fighting Apple had already cost them ten thousand dollars and had prompted the layoff of one of their workers. 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 and confront the tormenting by such huge companies like Apple when it comes to similar larger corporations enforcing their trademark rights.

Advocate Kislay Pandey, a prominent lawyer at Supreme Court of India while sharing his thoughts on trademark bullying by big companies said, “Trademark bullying is expensive to the one being bullied and harassed. It can cost anywhere between $375,000 USD to $2 million USD in the United States for an entity endure the expenses of such litigation. Since such cases happen mostly against people and organizations that do not have sufficient assets to contest in courts, they are indirectly forced to give up or change their mark completely. This can turn out to be very unfavorable to such entrepreneurs in situations where they have impressively invested money on promoting the brand through the disputed mark”.

One such example is that 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. The widely popular fast food chain, McDonalds has likewise, in several instances, come after companies utilizing the words 'Mc' or 'Mac' in their names, regardless of whether the company lies in the fast food industry or not.

In India, the Trade Marks Act, 1999 comprehends and addresses this issue. Under Section 142 of the Act, when an individual is 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

In the case of Apple v. Prepear- In the trademark dispute filed Prepear's logo, Apple has asserted that the impugned logo is likely to cause confusion in the minds of the customers, who may relate the minimalistic designof the pear fruit with that of Apple’s own logo.

However, if one chances upon the logo of Prepear, one can easily distinguish between it and Apple’s logo. While the two 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 color apart from being completely black on a white background.

Consequently, color scheme and the drawing style of both the logos are differently and easily distinguishable to the naked eye. Besides, Prepear and Apple's businesses are neither comparable nor do they produce similar goods, with the former being an application for cooking plans while the latter  deals in the creation, distribution and selling of electronic merchandise.

Advocate Pandey further quoted, “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

Dr. Kislay Pandey Kislay Panday Kislay Pandey Supreme court lawyer Managium juris litigation firm Advocate Kislay Pandey

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