An Apple, The Apple, Whose Apple?

The famous company Apple Inc is ready to take a ‘bite’ at Victoria School of Business and Technology. The dispute ‘centers around a piece of fruit‘. The ‘apple’ could be one of the most litigated issues in history.

The story begins in 1978 when Apple Corps, a recording company owned by The Beatles filed a lawsuit against Apple Computer [now Apple Inc] for a trademark infringement. The Beatles had used a green non-stylized apple as their logo long before Apple Inc created its famous apple with a bite.  Although in 1981 the two companies signed an agreement, the issue was far from settled. The acrimonious legal battles continued for more than 20 years. In 2007 the companies finally agreed that Apple Inc. will own all of the trademarks related to the fruit apple and will license back some of the marks to Apple Corps for their continued use. That might have settled the issue for The Beatles but the fight over the ‘apple’ is far from over. In September, 2007, New York City faced a lawsuit by Apple Inc for using a stylized green apple as a logo for its environmental awareness campaign.

On August 26 this year the ‘apple fight’ has transferred onto Canadian land. In a letter, Apple Inc espoused that the logo of Victoria School of Business and Technology[VSBT] infringed Apple’s trademark. Apple Inc argued that it had the exclusive right to use its apple-design logos and restrain ‘activities that are likely to cause confusion among consumers regarding the source of related products and services’. The corporation threatened the school that it will take legal action unless VSBT abandons any use of the logo and permanently changes its design as to exclude the use of an apple.

In its written response, VSBT outlined several important differences between the two logos that were sufficient to avoid confusion. Firstly, the school’s logo incorporates the VSBT acronym as well as the symbol of a mountain that is part of the logo design of a VSBT’s sister company. Commentators had also noticed that the Apple’s apple has a bite on the right side while VSBT’s logo depicts a full apple. Lastly, although Apple Inc has its logo also registered in stripes of different colors, the palette of colors used in the VSBT logo is quite different. 

Are those differences sufficient to avoid confusion between the two trademarks? S.6(5) of the Canadian Trade-marks Act lists a number of factors that a court should consider to determine confusion between two trademarks. Firstly, the court should evaluate the ‘inherent distinctiveness‘ of a trademark. In general, words that are commonly used in every day language are inherently less distinct and entitled to less protection than an entirely invented word or symbol, which by its nature is quite distinct. In this respect, very small differences are sufficient to distinguish marks that are not highly distinctive. 

Under this first factor, VSBT could argue that the apple, as a piece of fruit, has become a commonly used symbol, embedded in our culture. Thus, logos incorporating an apple are inherently less distinct and are entitled to less protection; small differences in the logos are sufficient to differentiate them for the purpose of the Trade-marks Act. In support of this argument VSBT can argue that the apple has widely been accepted as a symbol of education in North America. There are at least a dozen educational organizations that use the apple symbol as part of their logo. Furthermore, many physics textbooks depict a tree with falling apples when explaining Newton’s law of gravity. Lastly, expressions related to apples such as: ‘Comparing an apple to oranges’, ‘An apple a day keeps the doctor away’, and ‘The apple does not fall far from the tree’ are well-embedded in the English language.

The second factor the court should analyze when determining confusing marks concerns the length of time the trademarks have been in use. This factor weighs in Apple Inc.’s favour, because it has used its logo for over 30 years while VSBT has started using its logo since 2005.

The third and fourth factors under the Trade-marks Act concern the nature of wares and services and the route taken to deliver such wares and services. On the one hand, it could be argued that confusion might arise because both companies are associated with computers and technology.  If the logos of the two companies are too similar a student interested in computer education, for example, might think that VSBT is authorized by Apple Inc.  It is interesting to note that Apple Inc has its logo registered for educational purposes related to the ‘operation and management of a group of people for the purpose of enhancing their knowledge of computer hardware and computer software‘.  

Although such a scenario is possible, it is highly improbable. This conclusion is supported by General Motors Corp. v. Bellows, [1949] S.C.R. 678.  Products [such as education] that are not purchased on a daily basis and are expensive require high degree of selection on the part of the consumer. Thus more ‘subtle differences’ between marks could be allowed since ‘consumers will not confuse them in the course of routine and often hasty shopping’ but will rather ‘take the time to choose the item and therefore the mark associated with it’ 

The final factor concerns the degree of visual resemblance between the trade-marks. I have outlined the visual differences above. I agree with VSBT that those differences are quite significant and a consumer is unlikely to visually confuse the two trademarks.

In conclusion, the analysis of the five factors in the Trade-marks Act shows that it is unlikely for a consumer to confuse the two trademarks. No matter how this dispute settles, given the growing popularity of Apple Inc’s products and the fact that ‘history tends to repeat itself’, the fight over the ‘apple’ is far from over.

7 Comments
  1. Ms. Shahid,

    Very interesting article! And visually judging both logos, I’d have they say they look quite different as well.

    But I’m just wondering about another thing. I have noticed hundred of products with the prefix “i” attached them now, and some of them are related to the iPod, but some products have absolutely nothing to do with music (e.g. iBlaze, iFitness). In fact, you can pretty much search any noun, and you can find an “i” attached to it.

    So my question is, does Apple have any control over the placement of this letter? Or is it impossible, due to the fact that “i” is just a letter?

    Thanks!

  2. Tim thanks for your comment. I would think that Apple Inc. could not own the letter ‘i’ per se simply because it is part of common language and it will mean that no one else would be allowed to use it. But they could attach it to a word and that could be a trademark as the iphone, iPod, etc. Hope that answers your question.

  3. Anna’s analysis seems cogent. Visually the two symbols are quite different, although the school’s case would be slightly better if it omitted the leaf at the top. Still the colouring, no bite, the zigzag pattern, all differentiate. Apple cannot have a monopoly on any representation of the apple as a trade-mark. We don’t know why the school chose this symbol but presumably it is playing off the “apple for the teacher” idea. On factor 2, it is also relevant that the school has been using the apple symbol for some time – I think the broadcast story said a year. If so, one would expect instances of confusion to be available if there was any. It would be incumbent on Apple to bring those forward – not just the “moron in a hurry” type of confusee, but average consumers who are in the market for business education services and who would know the Apple trade-mark. If the viewer responses on the tv broadast are any guide, Apple is going to be hard pressed to find such bodies. Apple better watch out for the school’s slingshot.

  4. With regards to confusion between VSBT’s and Apple Inc.’s logos, Anna states that “although such a scenario is possible, it is highly improbable.” I disagree with Anna.

    The test of confusion is based on the “likelihood of confusion”. This confusion maybe source confusion or endorsement/ association confusion (s.6 TMA). The question here is whether the use of the VSBT apple in the marketplace is likely to cause endorsement confusion between VSBT and Apple Inc. marks. Specifically, are the users of VSBT wares and services likely to infer that these wares and services are associated or endorsed by Apple Inc. Also, that these users may infer that VSBT has permission from Apple Inc. to use a mark that is so similar to Apple Inc’s mark. This case turns on notoriety of the marks, the market area, the nature of the trade and the target consumer groups.

    Since VSBT’s logo has been in use for about a year in BC. They may adduce sufficient evidence that establishes the association of their “apple” with the educational services they provide, in BC, to students seeking “education in computers and technology”. However, Apple Inc. may produce overwhelming evidence that shows that their mark is associated with various computer software, hardware and other hi-tech services not only in BC, but all over the world. If Apple Inc. is in the business of providing computer education in another part of the world, it is highly likely that they may choose to transfer this type of business to BC.

    Professor Vaver is right with regards to the significant target group with regards to confusion in this case. The relevant target groups are “average consumers who are in the market for business education services and who would know the Apple trade-mark”. Focusing on these users, it is highly likely that students interested in computer technology, enough to enroll in a program offered by VSBT, would have knowledge of the Apple Inc. trademark. Upon seeing the similar mark used by VSBT in association with its services, the students may infer that Apple Inc. endorses VSBT’s services and has given VSBT permission to use such a similar mark in association with their educational services. This evidence would be enough to establish confusion.

    Although Apple Inc. may be argued to be a “famous mark”, this noteriety does not entitle Apple Inc. to cry infringement for any use of any apple symbol in the world. However, in the VSBT case, taking regards to all surrounding circumstances, especially the ‘nature of the trade’ and the ‘taget consumer group’, a likelihood of confusion is a reasonable prospect. The case would have been completely different if VSBT was a school that provided education in agriculture, swimming, aerospace engineering or even basket weaving. However, VSBT is in the business of selling computer/ technology education to students. Therefore, they should not use a mark similar to Apple Inc., without Apple’s permission. Steve Jobs and his crew at Apple Inc. have a strong case.

  5. Richard,

    you make an excellent point that confusion should be judged from the perspective of the ‘average consumers who are in the market for business education services.’ My question is this: If I am a person interested in computer technology education, would I not take my time to research which school I go to? I think, the average student, like me, would spend at least couple of hours to make sure that VSBT is in fact affiliated with Apple Inc, if that is the main reason for going to school there.

    Of course, we could hypothesize what the average person would think or do and disagreement on hypothetical scenarios is very easy. However, in this case we have concrete evidence that the average person is not confusing the two marks. On the VSBT website there is a poll as to whether the two trademarks are confusing. 75% of the 11, 101 respondents think they are not. You might question the credibility of the evidence because it appears on the VSBT website. I see no reason that to be true given that I was able to cast a vote and I am a person who has no stake at the issue. The sample of the poll is quite large and is sufficient to show that in fact no confusion in the minds of the average person exists.

  6. I take Richard’s point that the nature of the wares and services and nature of the trade could be seen as related. Had they been completely different, e.g. the school was educating swimmers or future basket weavers then that would have been a more clear cut or not likely confusing case. But then, what do we say to the Ontario Ministry of Education that uses an apple logo on the magnets it distributes for teaching awards? The Ontario curriculum is indeed intensifying its computer-related courses. And what of the other schools using the apple symbol as their logo? Yes, the test is likelihood of confusion and it is hard to think of why VSBT would be endorsing Apple Inc.’s products and not those of Apple Inc.’s competitors for instance. As Richard correctly points out it will all be based on the evidence, and as Anna notes, a survey already shows that this likelihood of confusion does not exist (see http://www.schoolvictoria.com/ApplesandOranges). Put simply, Apple Inc. does not have a monopoly on the apple.

    Moreover, the courts have already said that two apples can co-exist in the same industry: music. Apple Corp. (the Beatles company) sued Apple Inc. for its use of the apple and lost. If two apples can co-exist in music (where Apple Corp sold sound recordings and Apple Inc. came along with iTunes) why not here? Apple Inc. is not in the best position to argue likelihood of confusion when it argued against confusion with its own apple, in a more closely-related industry than we have here. Here the apple does not fall too far from the tree.

    I was interviewed by Take5.fm last week on this issue and explained that I thought that the school’s apple logo is not confusing with the so-called iconic Apple Inc. logo. In the same radio segment, also interviewed was Chris Boag, the VP and Principal of the VSBT school. He gave an informative interview on the reasoning behind the school’s use of the apple, a symbol of education. He also stated that at the time of the interview (Friday Oct 25, 2008 8.15 a.m.) he had not yet heard back from Apple Inc. The school has written a letter in response to Apple Inc. indicating that it intends to stand its ground and not cave into its threats. One would hope that if the school does hear anything, it would be more in the form of an apology.

    To listen to the radio segment of me and Chris Boag (about 10 minutes in total) see: http://archives.take5.fm/2008/10/24/october-25-2008–first-hour.aspx

  7. Anna, Prof. D’Agostino,

    I agree Apple Inc. should not have a monopoly on the apple. However, in this situation, the testing for confusion by VSBT through its website is highly skewed.

    Anna mentions, “concrete evidence”, which I assume is with regards to the web opinion poll?

    With all due respect, web-surveys, such as the one on the VSBT website (http://www.schoolvictoria.com/ApplesandOranges) are not illustrative of what they intend to test. These are merely opinion polls that at best, simply answer the question “how many different IP’s were registered on a datatbase as having selected option yes or option no”.

    Such a poll should never be referred to as a “survey”. Nor should it be referred to as “evidence”. It is stastically insignificant and irrelevant to the question of confusion. This ‘poll’ lacks reliability, validity and in turn is not at all credible. Regardless of whether this type of poll would have appeared on the VSBT site or on the Apple Inc. site, it has not a modicum of relevance to the question of confusion.

    The VSBT poll fails in two major considerations. i) WHO is being tested, and; ii) WHAT is being tested. With regards to who’s being tested. We could assume it’s anyone that clicks on to that site, reads the question and selects a response. This could be; bloggers, online news readers, students from VSBT, spambots, bored programers at Apple Inc. etc… basically anyone/ anything from anywhere in the world. Not to mention the techie deviants who surf using proxy servers which change or do not register their IP, and ‘vote’ repeatedly. The proper group of people to be tested is mentioned above (students seeking a computer education, who may have a vague recollection of the Apple Inc. sign), and this group should also be based on a representative (random) sample. Of this random sample, there should also be a control variable group.

    2) What is being tested? Confusion is a legal concept. Asking someone on the street, or even an educated legal expert (such as a judge, who has never engaged in any Trademark issues), whether something is “confusing” or not will NOT provide the answer sought by the question of “what is the likelihood of confusion” as a legal concept.

    Polls and surveys are important in trademark disputes. Social surveys are now accepted in courts as an exception to the hearsay rule, when testing for confusion of marks within a given demographic. However, they are highly scrutinized to make sure that they are administered properly, that they measure what they propose to measure and that they are statistically significant. Otherwise, the surveys will not be accepted into evidence. Huge cases such as Veuve Cliquot (the champaigne case) and Mattel (barbie case – http://csc.lexum.umontreal.ca/en/2006/2006scc22/2006scc22.html) have turned on survey evidence.

    Such a poll by VBST would never be accepted into any court as evidence. It is not even persuasive enough for a student to refer to it a source of “concrete evidence”.

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