A curious case of apples versus pears

Bowl of apples and pears

Background image by KamranAydinov via Freepik.com

Binh Rey profile photo
  • Binh Rey - Associate, Trade Mark Attorney
  • Associate, Trade Mark Attorney

A logo trade mark is a unique and creative expression of a brand. As one of the key elements of brand recognition, it is therefore imperative that businesses act to defend their trade mark rights, should a similar logo arise in the marketplace.

But what happens when a claim of similarity does not hold up under legal and logical inspection? Such is the case of a small American business that is fighting claims from tech giant, Apple, who believe their new logo is deceptively similar to the famous Apple logo.

Prepeared

Natalie and Russell Monson have spent the past five years developing a recipe and meal planning app called Prepeared. It is designed to allow food bloggers to upload recipes. Subscribers can then access the platform to plan meals and shopping lists.

The business employs three other staff, and also runs a website called Super Healthy Kids. They have around 21,000 monthly active users and 3000 paying subscribers.

It’s a small business and they worked with a professional designer to create their logo— a pear shape that alludes to the ‘P’ in ‘Prepeared’. The logo trademark was approved in other countries without dispute, and American authorities had not taken issue with the application, lodged in 2017.

In 2019, the American patent office published the business’ application, as a final step before approval. It was then that Apple filed an objection, claiming that the similarity between the two trademarks would hurt their own brand.

Apple’s objection states that the Prepeared logo, ‘consists of a minimalistic fruit design with a right-angled leaf, which readily calls to mind Apple’s famous Apple Logo and creates a similar commercial impression, as shown in the following side-by-side comparison.’

A curious case of apples versus pears

Image sourced from Instagram; @superhealthykids

The right to enforce

It is important that brands enforce their trade mark rights. In the case of someone infringing on a trade mark, the trade mark holder has every right to object and request a cessation of use.

Part of protecting a brand and trade mark includes lodging formal objections to trade mark applications that are identical or very similar to a registered or pending trade mark. According to IP Australia, if this similarity is likely to deceive or confuse customers, then an objection is warranted.

Apple claims that because Prepeared offers ‘services related to computer software, as well as healthcare, nutrition, general wellness, and social networking’, customers may confuse the service with their own health- and nutrition-related apps. Furthermore, Apple considers a meal planning services app as being ‘within Apple’s natural zone of expansion for Apple’s Apple Marks.’

In this instance, it’s worth noting that Apple’s existing nutrition and fitness apps do not use any pear-related logos. Should Apple expand their apps to include a similar platform, it is still unlikely that they would use a pear logo as it is not in line with their branding.

As a large and internationally recognisable company, it is understandable that Apple would request that the application for the Prepeared logo be denied. They have a history of aggressively enforcing their Apple trade mark, with two notable objections including the apple-shaped logo of a Norwegian political party and a German cycle path.

Lodging an objection is a costly process and is likely to require the support of professionals, such as lawyers or trade mark attorneys. Big businesses such as Apple can afford the right of enforcement, but smaller businesses like Super Healthy Kids are greatly impacted by the costs of both lodging and fighting an objection.

The two official tests

There are two important considerations that the trade mark office gives to any filed objection. In Australia, the following tests are applied to any examination of a mark:

    1. Side-by-side test

      In this case, the two logos are compared side-by-side. If they don’t appear to be visually similar, then a trade mark is likely to be granted.

      Apple claims that the Prepeared pear logo is comparable to their own easily identifiable apple logo. However, the similarity between the two brands’ logos is questionable, other than the fact that they are both a fruit. It’s possible that Apple is stretching the boundaries when it comes to aesthetic comparisons—and they have the funds to do so.

    2. Deceptive similarity

      A trade mark that is deceptively similar to a brand in the same category is unlikely to be granted a trade mark. For instance, a quick glance at the soft drink aisle in a supermarket is not likely to result in confusion between Coca Cola and Pepsi. If the authorising body considers that the pear logo could be confused with the apple at a quick glance, they would not approve the trade mark application.

      As with the side-by-side criteria, the Prepeared pear logo and the Apple logo do not appear deceptively similar, at first glance. One is a green pear, with a leaf tilted downwards on the right hand side. The other is a black apple, with a notably thinner outline, and the leaf tilting upward on the right hand side. It’s a long bow that Apple are drawing in claiming deceptive similarity between the two.

The cost of protection

Apple is known for their zealousness in protecting their trade mark, and this is not the first time they have come up against a pear logo. In Europe, 2019, Apple lost their appeal against a Chinese software company, Pear Technology. That case concluded that an apple is very unlikely to be mistaken for a pear, which draws a question mark over Apple’s objection to Prepeared’s logo.

The cost of contesting Apple’s claims can run high, and Prepeared have stated that they’ve had to lay off one of their three staff as a result. It raises the question of why Apple are so fervent about preventing dissimilar logos from obtaining a trade mark, particularly where the official trade mark tests have not noted any deception or copycat design.

Notably, tech company Blackberry has not provoked any action from Apple, despite having a fruit-related name trade mark. Could it be that Blackberry has the means to assert their own rights? Or that their logo trade mark is discernibly different?

The outcome

Ultimately, the outcome of this conflict lies with the American authorities. In the meantime, there is immense financial and psychological strain on the smaller business, who have stated they feel a moral obligation to fight Apple. To note in this case is the seeming imbalance of justice between those without funds and those with deep pockets.

It also emphasises the importance of a unique logo. Given Apple’s propensity to fight other fruit-related trademarks, it appears that Prepeared may stand a better chance given the individual properties of their logo design. In the case of Apple versus Pear Technologies, the Board of Appeals ruled that there was a visual and conceptual similarity between apples and pears. The Court overruled this, finding that the similarity was not sufficient for consumers to be genuinely confused.

Perhaps, with this background, there is hope for the smaller startup company and their original logo design. Only time will tell whether David or Goliath will win in this trade mark dispute.