–Sharon Armstrong, Attorney

The inquiring minds at TechDirt have unearthed a spat between Apple and Woolworths (the supermarket chain in New Zealand and Australia) due to the latter’s adoption of a curly-cue-letter-W-shaped mark, shown below:


Putting aside dilution issues, the central question would appear to be whether confusion is possible, let alone likely, given that Woolworths is a grocery store where people purchase…groceries, including apples (both green and red!) and Apple sells computers, phones and addictive little music devices. Many of the folks leaving comments to the article answered this question in the negative.

But there’s a larger issue lurking beneath the surface of this spat—specifically, the fact that Woolworths is seeking registration of its mark in connection with electronics and other goods that are related and may in fact compete with Apple’s electronic devices. New Zealand and Australia, like the United States, are “first to use” countries, meaning that purveyors of goods and services may assert rights in their trademarks and service marks upon first use and accrue common law rights from that time, which in this case may well provide Apple with priority and victory over Woolworths in New Zealand and Australia (provided, of course, that consumers are likely to confuse the two marks for electronics and related goods and services).

In contrast, if New Zealand or Australia were “first to file” countries, Apple would be facing a tougher battle. “First to file” countries—including much of the European Union, China, Japan and India—allow the earliest filer to obtain a registration of a given mark. These countries likewise often allow registrants to claim the entirety of goods and services in any given class, making challenges for U.S. companies even more time-consuming and costly.

Regardless of the filing system at issue, it is important for U.S. companies to consider foreign businesses and their trademarks in their overall strategy in investing in and protecting their brands.