Apple hit with trademark lawsuit over iPhone X 'animoji' feature
Recently, a Japanese software company Emonster is suing Apple in a US court over the trademark for the term “animoji”, alleging the US technology company stole the name to use on a feature of its iPhone X.
According to the suit, Apple knew about Emonster’s ownership of the Animoji trademark because the app is in the Apple Store, which may be considered as ‘deliberate’. Apple allegedly offered to buy the trademark, and when it was turned down, kept using the name anyway. However, Emonster is seeking an unnamed amount of money in damages and a court order to immediately block Apple from continuing to use the name.
When your business will be liable for deliberate trademark infringement?
The acts amounting to (primary) infringement of a trademark are set out in Section 27 of Trade Mark Act (TMA):
Section 27(1): A person infringes a registered trade mark if, without the consent of the proprietor of the trademark, he uses in the course of trade a sign which is identical with the trademark in relation to goods or services which are identical with those for which it is registered.
Section 27(2): A person infringes a registered trade mark if, without the consent of the proprietor of the trademark, he uses in the course of trade a sign where because
(a) the sign is identical with the trademark and is used in relation to goods or services similar to those for which the trademark is registered; or
(b) the sign is similar to the trademark and is used in relation to goods or services identical with or similar to those for which the trademark is registered, there exists a likelihood of confusion on the part of the public.
Section 27(3): A person infringes a registered trademark which is well known in Singapore if —
(a) without the consent of the proprietor of the trademark, he uses in the course of trade a sign which is identical with or similar to the trademark in relation to goods or services which are not similar to those for which the trademark is registered;
(b) the use of the trademark in relation to those goods or services would indicate a connection between those goods or services and the proprietor;
(c) there exists a likelihood of confusion on the part of the public because of such use; and
(d) the interests of the proprietor are likely to be damaged by such use.
Infringement is generally made out if the defendant, without the consent of the plaintiff, uses in the course of trade a sign which is identical with or similar to the registered trademark in relation to goods or services which are identical with or similar to those for which the trademark is registered. According to section 2(4) of TMA, the word “use” means “to use (or any particular description of use) of a trademark, or of a sign identical with, similar to, or likely to be mistaken for a trademark, include use (or that description of use) otherwise than by means of a graphic representation”. In such an event, the original trademark owner may be able to claim an injunction, damages, account of profits, and statutory damages against the party who has used the infringed trademark.
In the light of the cases British Sugar plc v James Robertson and Sons Ltd  RPC 281 and Philips Electronics NV v Remington Consumer Products Ltd  RPC 809, it should be careful that the defendant’s “use” of the Plaintiff’s sign does not need to be in the “trademark sense”, which means even it is not as an indicator of trade origin of the goods/services so as to cause confusion in the marketplace, it may still constitute infringing use.
What to do when you involved in a trademark infringement?
One of the most common defenses to claims of trademark infringement is ‘fair use’, which occurs when a descriptive mark is used by a third-party to identify the primary meaning of that mark and no consumer confusion is likely to result. These uses are privileged because they use the terms only in the descriptive sense. Some courts have recognized a slightly different fair-use defense called nominative use. Nominative use occurs when use of a protected term is necessary for purposes of identifying another business’s product, not the user of the mark’s own product.
According to Section 28(4) of TMA, notwithstanding section 27, a person who uses a registered trademark does not infringe the trademark if such use:
(a) constitutes fair use in comparative commercial advertising or promotion;
(b) is for a non-commercial purpose; or
(c) is for the purpose of news reporting or news commentary.
Another objective of this provision is that it allows for fair use of a competitor’s registered trademark in comparative advertising, for example, advertising and comparing of products by reference to a competitor’s trademark, or use of a competitor’s trademark for the purpose of identifying goods or services as those of the proprietor or a licensee.
Moreover, in Section 28(1), a person does not infringe a registered trademark when:
(a) he uses his own name or the name of his place of business;
(b) he uses a sign to indicate the kind, quality, quantity, intended purpose, value, geographical origin or other characteristics of goods or services, or to indicate the time of production of goods or of the rendering of services; or
(c) he uses the trademark to indicate the intended purpose of goods (in particular as accessories or spare parts) or services, so long as such use is in accordance with honest practices in industrial or commercial matters.
Therefore, when you are involved in a trademark infringement, it is better to look for a professional trademark lawyer to guide you through the process and fight for your interests.
How can we help you?
At I.R.B. Law LLP we firmly believe that your ideas deserve protection. People should not be simply allowed to use your idea or design and reap the benefit from your hard work. If someone without your authorization has used your Trademark, our Trademark lawyers can assist to verify and confirm the infringement. Reach out to our team of professional Intellectual Property Lawyers should you find yourself in such position or if you require any further advice.