Local company beats computer giant

In a recent decision by a delegate of the Registrar of Trade Marks, it was found that the trade mark STATSPOD was not substantially similar to Apple Computer Inc’s trade mark IPOD.

On 18 April 2005, a Melbourne company Gundy Computer Services Pty Ltd, which trades as Prowess Sports, sought to register the trade mark STATSPOD for a range of goods in class 9 including computer software, computer hardware, hand held computers, personal digital assistant devices as well as services in class 35 including business services, provision of data and information online or via a computer network system and market research. Prowess Sports is one of Australia’s leading providers of sports statistics and sports management software and its products are used by a number of AFL clubs. EKM patent represents Prowess Sports.

In early 2005, Prowess Sports developed software for the wireless collection of sporting statistics using voice activation technology. Presently, sporting statistics are collected by manual recording. The trade mark STATSPOD was selected for the software and associated hardware as an acronym of the words STATiStical Performance On Demand to allude to a logging device operated to deliver sporting performance statistics for coaches and analysts on demand.

The trade mark was accepted for registration by the Trade Marks Office, but was opposed by Apple in November 2005. The matter was finally heard by a delegate of the Registrar of Trade Marks on 6 May 2008. Apple argued that the mark STATSPOD was substantially similar to its registrations for the mark IPOD for the same or similar goods and that use of the mark STATSPOD was also likely to deceive or cause confusion because of Apple’s reputation for the IPOD mark. Apple argued that because of the common element “POD” in both marks, the public would think that STATSPOD was a brand extension of IPOD.

Prowess Sports’ attorneys put forward counter arguments that the marks were sufficiently different visually, aurally and in general impression. Prowess Sports also argued that Apple was well known for a family of “i” prefix marks and not “POD” suffix marks and as a result the public would not consider IPOD or STATSPOD to be related or connected in anyway.

On 20 May 2008, the delegate’s decision issued finding that the two marks were not substantially identical or deceptively similar as the marks had so little aural or physical resemblance. Accordingly, Apple’s opposition was dismissed and the mark STATSPOD was allowed to proceed to registration.

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