What happens when a well-known brand is unintentionally embedded in a coined word?

Apple Inc. v Penta Security Systems Inc [2024] SGIPOS 10. 

What happens when a common English word, which also serves as a well-known brand such as “APPLE”, is incorporated incidentally into an invented word? Furthermore, does a brand’s strong reputation and recognition necessarily translate to a higher likelihood of confusion arising from another trade mark?

These intriguing questions formed the crux of a recent dispute before the Intellectual Property Office of Singapore (IPOS) in the case of Apple Inc. v Penta Security Systems Inc [2024] SGIPOS 10. 

In this case, Apple Inc. (“the Opponent”) opposed the trade mark registration of “” (the “Application Mark”) filed by South Korean cybersecurity firm Penta Security Systems Inc. (“the Applicant”). 

Marks similarity
In this case, the Opponent argued that the Application Mark bore too close a resemblance to its “APPLE” marks, raising concerns about potential confusion among consumers. However, the Principal Assistant Registrar (PAR) for this case dismissed the opposition on all grounds, finding that the marks “WAPPLES” and “APPLE” were visually, aurally, and conceptually distinct. 

The Opponent’s main contention was that consumers would dissect the letters “A-P-P-L-E” within “WAPPLES” into “W-APPLE-S”, leading to an association with its brand. Additionally, Apple argued that the five letters in “APPLE” were central to both marks, and that the stylised “W” in the Application Mark would not be readily perceived as the letter “W”. On this basis, Apple asserted that consumers would pronounce the mark as either “APPLES” or “wear-pples”.

The Applicant contended that the average consumer would not dissect the Application Mark into “W-APPLE-S” but would perceive it as a whole. Furthermore, the Applicant emphasised that the “W” at the start and the “S” at the end of the mark are distinct sounds that would not be dropped during pronunciation. 

The PAR agreed with the Applicant’s reasoning and found that the distinctive and dominant component is the Application Mark as a whole, and not selectively the five letters “A-P-P-L-E” incorporated within it. According to the PAR, the consumer would view the Application Mark as “”, whereas the Opponent’s proposition regarding how the mark would be visually perceived as “W-APPLE-S” was found to be contrived and unrealistic. In addition, the PAR also found that consumers are unlikely to separate the following vowel “A” from “W” and link “A” to “PPLES” (to make the sound “apples”) in pronunciation. Overall, the PAR found that the competing marks are visually and aurally dissimilar. The PAR also found that the marks are conceptually different, and that there was no conceptual comparison to begin with, considering that “Apple” is plain English word, whereas “WAPPLES” is an invented word. 

Likelihood of confusion
The PAR further held that there is no likelihood of confusion, even if similarity of the marks had been established. The strong reputation of the “APPLE” brand, as asserted by the Opponent, meant that consumers were unlikely to mistake “WAPPLES” as being related to the Apple brand. This recognition of Apple’s distinct identity diminished the likelihood of confusion. Thus, even if the Opponent had established marks similarity, it would not be able to establish a likelihood of confusion. Even more so where the Opponent is known to use “APPLE” combined with other words such as “APPLE TV”, “APPLE MUSIC” and “APPLE PAY”, but not “APPLE” in a different spelling, nor in the plural form “APPLES”. 

Bad faith allegations
The PAR also dismissed the Opponent’s claim of bad faith. Even if the Applicant had been aware of the “APPLE” marks during the creation of “WAPPLES,” the choice of the Application Mark could not be deemed “commercially unacceptable by reasonable and experienced persons in the trade.” The PAR concluded that the invented word “WAPPLES” was distinctive and dominant on its own merits, and the inclusion of “A-P-P-L-E” was incidental, not improper.

Commentary
Apple’s globally recognised reputation, built on decades of innovation and iconic branding, ironically worked against it in this case. While the company argued that the strength of its brand increased the likelihood of confusion with the “WAPPLES” trademark, the PAR found otherwise. The widespread familiarity with Apple’s name and products meant that consumers were less likely to mistake “WAPPLES” for an Apple-related brand. This recognition of Apple’s distinct identity ultimately diminished the risk of confusion and supported the Applicant’s case for registration of its “WAPPLES” mark. 

Marks & Clerk Singapore LLP represented the successful Applicant in this case.