iPad vs MI PAD

JPO sided with Apple Inc. in a dispute with a China-based consumer electronics company, Xiaomi that registers and uses the “MI PAD” trademark on tablet computers by finding that “MI PAD” is likely to cause confusion with “iPad”.
[Opposition case no. 2019-685002, Gazette issued date: November 27, 2020]

Xiaomi “MI PAD”

Xiaomi, a China-based electronics manufacturer headquartered in Beijing, filed a trademark application for word mark “MI PAD” via the Madrid Protocol (IR 1223839) in respect of various goods including table computers, downloadable music files, downloadable image files in class 9, and telecommunication access services and others in class 38 on August 22, 2017.

Prior to filing the application, Xiaomi newly introduced its first tablet, the Tegra K1-powered “Mi Pad” in 2014.

The JPO admitted registration of the MI PAD mark on December 7, 2018.

Opposition by Apple “iPad”

The Opponent, whose earlier ‘iPad’ trademark for its computer tablet products was also registered in Classes 9 and 38, is the U.S. tech giant, Apple Inc.

The heart of this dispute concerned the grounds of opposition raised by Apple Inc. against Xiaomi’s ‘MI PAD’ mark registration in Japan under Article 4(1)(xv) of the Japan Trademark Law.

Article 4(1)(xv) is a provision to prohibit any mark from registering if it is likely to cause confusion with other business entities ’ well-known goods or services.

The Opponent argued the “MI PAD” mark shall cause confusion with Apple “iPad” when used tablet computers and related goods and services, given a remarkable reputation of “iPad” holding a top market share (42% in 2017, 43.2% 2018) in Japan and the close resemblance between “iPad” and “MI PAD”.

JPO decision

The Opposition Board admitted a remarkable degree of reputation and popularity of opponent trademark “iPad” based on the produced evidence boasting the top market share consecutively for the past nine years in Japan. Besides, the Board found “iPad”, consisting of “i” and “Pad”, is highly unique because the term “Pad” is anything but descriptive in relation to tablet computers.

In the assessment of mark, the Board held the dissimilarity between the signs at issue, resulting from the presence of the additional letter ‘m’ at the beginning of “MI PAD”, is not sufficient to offset the high degree of visual and phonetic similarity between the two signs. It is unquestionable that the designated goods and services are closely associated with tablet computers and consumed by the same consumers.

If so, it is likely that the consumers at the sight of disputed goods and services bearing the “MI PAD” mark would confuse or misconceive its source with Apple Inc. or any entity systematically or economically connected with the opponent.

Based on the foregoing, the Board decided opposed mark shall be canceled in contravention of Article 4(1)(xv).

JPO Annual Report 2019

The Japan Patent Office released its 2019 Annual Report (in Japanese only) on July 12, 2019, which contain informative figures and statistics relating to IP applications in Japan and on all other activities of the JPO.

Trademark Applications in Japan

The number of trademark applications in Japan has increased recent years.
In 2018, 184,483 trademark applications were filed to the JPO. TM application via Madrid Protocol increased to 17,802 by 2.7% compared to the previous year. Direct application decreased to 166,681 by 4 %.

Trademark Application to JPO by Year

Timeline for Trademark Registration

Due to the recent increase, timeline for trademark prosecution, i.e., the average time between filing and first office action, was getting longer for the last four years in a row. Trademark Average First Action Pendency was 6.3 months in 2017. In the meantime, the pendency in 2018 exceeded 7.9 months on average. Accordingly, the average total pendency period for trademark registration was 9.3 months in 2018.

Timeline for trademark registration

Application to JPO by Foreign Company/ Non-resident

39,209 trademark applications, which account for 21.3% of the total, were filed by foreign company or non-resident in 2018. The number was increased by 8.4% since last year.

TM Application to JPO by Foreign applicants

The statistic shows Europe was leading the ranking with about 10,000 trademark applications in 2017.
In 2018, China took the leading place eventually.