Apple’s (trade mark) Crumble

Apple Inc.’s recent trade mark application for IWATCH recently took two hits at the UK Trade Mark Registry. Firstly, the Swiss watchmaker Swatch succeeded in opposing Apple’s trade mark application for the mark IWATCH in the UK (see the decision of Allan James here). Apple attempted to register IWATCH in relation to a range of class 9 products, including “computer hardware”. The opposition by Swatch, based on earlier rights in the marks ISWATCH and SWATCH was successful, with Allan James concluding that because of the similarity of the marks and the goods, there would be a likelihood of confusion. Swatch were not successful in opposing these products however “computer software; security devices; computer peripherals; parts, components, and cases for all of the foregoing goods” on the basis that they are not similar to the goods covered in Swatch’s earlier registrations. This is a thought-provoking conclusion, especially noting the success of the Apple’s other “i”-prefixed brands, such as the iPhone, iPod and iPad. Allan James addressed this by saying that he remains “doubtful that it is factually correct to say that the relevant UK public expect any i-prefixed mark for electronic goods or services to be a mark of [Apple]”. He further notes that the case law has consistently focused on the level of distinctiveness of the earlier mark and whether it is a member of family of marks (which may increase the normal scope of protection afforded to any earlier mark), but it is quite another thing to say that when the facts are reversed the junior mark should benefit from the effect of belonging to a family. The BBC report on this stated that if Apple wished to use the name IWATCH in the UK at some point in the future, it can do so but with limited products. This is incorrect, as the matter in question was an opposition. Apple has been denied a trade mark registration for certain products, but can still use the mark on these refused products, although in doing so, they risk Swatch bringing a trade mark infringement claim. In addition, the application for IWATCH was also opposed by Arcadia Trading Ltd on absolute grounds. The opponent argued that the mark IWATCH it is devoid of distinctive character and is descriptive of the goods in the application. The UKIPO held that the existing guidance and case law to date indicate that the prefix “I” would most likely be viewed as “internet”, which when used in conjunction with the entirely descriptive term “watch” results in a mark descriptive of a watch-like device with internet connectivity. It was concluded that the opposition should succeed against all the products, except for “security devices; cameras; computer peripherals; radios; accessories, parts, components, and cases for all of the foregoing goods”, as these products “do not cover some form of smart watch”. As with the previous opposition brought by Swatch, there was some debate as to whether Apple was able to rely upon the existence of a family of “i” prefixed marks. The Hearing Office stated that if she were to allow this, it would in effect be tantamount to allowing Apple to benefit from distinctiveness acquired by virtue of the use made of the other marks. However, the Hearing Office concluded that use of the other marks with the “i” prefix (e.g. iPad, iPhone) is not use of the mark IWATCH for the purposes of acquired distinctiveness. In the end, Apple rebranded to Apple Watch but this saga still raised some very interesting trade mark issues.

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