One interesting trademark dispute from Japan shows us how difficult sometimes is famous trademarks to be invoked in opposition procedures.
The case concerns a trademark MACLOGIC filed by a local company in Japan for classes 9 and 42 – mainly computer software and design.
Against this mark, an opposition was filed by Apple Inc based on an earlier mark from MAC accompanied by a claim of trademark reputation. According to Apple, the mark applied for was similar to the earlier one due to the identical first part MAC, which was famous amongst Japanese consumers in relation to the company’s laptops and software. This was able to create consumer confusion in regard to the source of trade origin of the goods and services.
The Japan Patent Office, however, didn’t find both marks similar enough from a phonetic, visual, and conceptual point of view.
What’s a more, the Office considered the earlier mark reputation as established only for some consumers in the country but not for the public in general. Because of this, the opposition was dismissed.
The interesting moment in this decision was the fact that the reputation of a mark amongst the relevant consumers was not enough in order for this claim to be well established for the proceeding.
The General Court of the European Union has ruled in joined cases T‑26/21 to T‑28/21, Apple Inc. v Swatch AG.
These cases concern registered EU trademarks THINK DIFFERENT owned by Apple against which an application for revocation was filed by the Swiss company SWATCH. The gound for the application was non-use for a period of 5 consecutive years.
Apple submitted evidence for genuine trademark use within the EU but the EUIPO and the Board of Appeal after that dismissed them as insufficient.
The General Court upheld the EUIPO’s position on the case. The reason for this negative result for Apple was hidden in the details of how the marks were used and how this was proved.
From the Court decision:
The applicant complains that the Board of Appeal did not take into account the high level of attention of the relevant public when assessing whether the contested marks had been put to genuine use. In particular, it claims that the Board of Appeal disregarded the case-law according to which consumers pay a high level of attention when purchasing durable and highly technical goods and, at the same time, closely inspect their technical specifications. The Board of Appeal thus concluded, wrongly, that the relevant public would carelessly overlook the top part of the packaging of iMac computers displaying their specifications.
Furthermore, according to the applicant, the Board of Appeal failed to take into account the fact that computers and computer accessories in Class 9 are often sold ‘as seen’ on the shelves of department or specialist stores, where consumers have the opportunity to inspect their packaging visually before purchasing them. It adds that, in those stores, in a typical configuration, those goods are sold on a self-service basis, as the new photographs in the application show, and in that case consumers rely primarily on the original packaging.
It is important to note, however, that, even if the Board of Appeal did not consider the high level of attention of the relevant public for personal computers and computer accessories in Class 9, that cannot have any bearing on the conclusion according to which the contested marks accounted for only a rather insignificant space next to the barcode. In any event, the applicant has not demonstrated that such consideration would have led the Board of Appeal to find that the consumer would examine the packaging in any detail and that he or she would pay particular attention to the contested marks.
As regards the process of purchasing the goods at issue, it should first be noted that, in certain cases, computers and computer accessories in Class 9 may indeed be sold on a self-service basis to consumers, displayed on shelves. Next, in other cases, as the intervener points out, they are stored in a place which is not directly accessible to the public (for example, in their packaging or in a storeroom). Consumers may, however, try out the display models that are presented without their packaging on the table and consult the technical sheets placed next to each product. Last, those goods may also be purchased online, on the basis of information appearing in special catalogues or on the internet.
The applicant complains, in essence, that the Board of Appeal erred in finding that the sales figures for iMac desktop computers provided by the applicant related only to certain Member States of the European Union, namely the United Kingdom, Finland, Denmark and Germany. It claims to have sold more than four million iMac computers under the mark THINK DIFFERENT during the relevant period throughout the European Union, as is allegedly proved by the witness statement of the director of its legal department, dated 23 March 2017.
In the present case, as EUIPO correctly submits, the witness statement was drawn up by the director of the applicant’s legal department and therefore cannot have the same reliability and credibility as a statement from a third party or a person who is independent of the company in question. Accordingly, that statement is insufficient in itself and merely provides an indication which must be confirmed by further probative evidence (see, to that effect, judgment of 21 September 2017, Repsol YPF v EUIPO – Basic (BASIC), T‑609/15, EU:T:2017:640, paragraph 64 and the case-law cited).
In that regard, it should be noted that, according to the witness statement of 23 March 2017, more than four million iMac computers under the mark THINK DIFFERENT were actually sold throughout the European Union during the relevant period. Those sales figures contained in the witness statement are not, however, confirmed by any further probative evidence. Indeed, the annual reports for the years 2009, 2010, 2013 and 2015, attached to the witness statement of 23 March 2017, contain only information on the net worldwide sales of iMac computers. They do not provide any details as to the sales figures of iMac computers in the European Union.
The applicant claims that, contrary to the Board of Appeal’s reasoning, the joint use of multiple trade marks on the packaging of iMac desktop computers cannot, in itself, undermine the function of the contested marks as a means of identifying the goods concerned. In its view, the contested marks were used jointly, but autonomously, with the other marks affixed to the packaging of iMac computers in so far as they were set clearly apart from the other marks on the packaging and at sufficient distance from the nearest mark, namely Macintosh.
The applicant criticises the Board of Appeal for having taken into account, in its assessment of the genuine nature of the use of the contested marks, new criteria, contrary to established case-law. According to the applicant, there is no case-law requiring it to be demonstrated that the contested marks have been affixed to a particular place on the packaging of the product concerned and that they appear in large letters.
It is true, as is apparent from the case-law relied on by the applicant, that there is no precept in the EU trade mark system that obliges its proprietor to prove the use of its earlier mark on its own, independently of any other mark or any other sign.
However, a registered trade mark that is used in conjunction with another mark must continue to be perceived as indicative of the origin of the product at issue for that use to be covered by the term ‘genuine use’ within the meaning of Article 15(1) of Regulation No 207/2009.
In the present case, it should be noted that, contrary to what the applicant claims, the Board of Appeal did not base its conclusions as to the lack of genuine use of the contested marks solely on the finding of the presence of the word mark Macintosh on the packaging of iMac computers next to the contested marks.
On the contrary, the main ground on which the Board of Appeal based its conclusion is that some of the evidence produced by the applicant to that end falls outside the relevant period and that the images produced by the applicant show the contested marks in a single place on the box packaging and that that use alone could not be regarded as genuine in the light of the characteristics of that use, in particular its size and location.
Second, as regards the requirements linked to the positioning and size of the contested marks on the packaging, it is apparent from the case law cited in paragraph 61 above that genuine use of a mark can be found only where that mark is used to guarantee the identity of the origin of the goods or services for which it was registered.
In the present case, as the photographs of the iMac computer packaging in the file illustrate, the word elements ‘think different’ do not appear on the labels affixed to the box packaging in a way which particularly draws the consumer’s attention. On the contrary, those word elements are placed under the technical specifications of the iMac computers, and just above the barcode in a relatively small character size. That expression is, moreover, accompanied by the word ‘macintosh’ of the same size and written in the same font.
It must therefore be concluded that the way in which the contested marks are used on iMac computer packaging does not ground the conclusion that they have been used as trademarks, that is to say, in accordance with their essential function of giving an indication of the commercial origin of the goods concerned.
All of these shows how important trademark placement is. It should be clear and in a way to indicate trade origin. In such cases putting a small R in a circle after the mark could be really helpful because it will show trademark protection.
Masaki Mikami has published another interesting trademark dispute from Japan this time focusing our attention on the question – To be an apple or not to be.
In the case at hand, we have the following already registered figurative trademark in class 9 – protection covers and cases for smartphones, protection covers and cases for tablets, cases for laptops:
Apple Inc, filed an application for invalidation of the mark based on its following earlier figurative mark in class 9, for which an acquired reputation was claimed:
The Japan Patent Office acknowledged that Apple’s mark has a strong reputation amongst Japanese consumers.
Nevertheless, the Office dismissed the invalidation request finding both signs not confusingly similar.
From a visual point of view, the marks were not similar enough even if the later sign was rotated 90 degrees to the left. According to the Office, the sign does not create the same impression due to some details and overall appearance.
The phonetical comparison was not possible because both signs had no particular sound.
Conceptually, the earlier sign relates to Apple as a company and technology products and services whereas the latter mark has no specific meaning.
Based on this the Office concluded that there is no similarity and from that perspective any reason for invalidation.
The Supreme Court in Norway has ruled out in a lawsuits regarding the iPhone trademark.
The case concerns not original screens for iPhones imported into the country where the brand logo was covered up.
Initially the Court in Oslo ruled out that there was no infringement because the trademark was not been visible for the consumers.
The Supreme Court, however, overturned that decision stating the contrary. The arguments for this were the fact that although the brand was not visible the covering could be easily reversed in order to make the spare parts more valuable. This can create confusion whether the screen are original or not.
Apart from that, the target consumer group is not the end users but the repairers performing the installation in the repair shops. Because of this there was a higher degree of attention which can lead those consumers to the idea that the screens are counterfeit.
The Court cited the European Court’s position in the case Mitsubishi (C-129/17), where spare parts with even removed brands are considered as trademark infringements.
The only question that can bother the Court and the society as a whole in such cases is the fact that all infringed goods will be destroyed as a general rule of thumb which can reflect negatively on the environment. This issue is valid for most of the countries around the world where the legislation is similar. Probably the law has to stipulates an option at least for recycling.
A recent trademark battle between Apple and Swatch has ended with success for the Swiss company.
The dispute at hand concerned a trademark application for ‘one more thing’ filed by Swatch.
Apple filed an opposition arguing that this phrase was well-known by consumers in relation to its products because it had been used in their launching.
The Australian Patent Office disagreed stating that according to the evidence Apple had used this phrase only once. This wasn’t enough to constitute real trade usage for the purpose of the trademark opposition procedure.
In addition, Swatch emphasized that the idea for this trademark was inspired by the “film noir” genre and in particular by the character of Colombo detective who regularly used this phrase in his investigations.
Apple Inc. lost an interesting lawsuit before the General Court of the European Union regarding its famous trademark logo. The case at hand concerns an attempt by the Chinese company Pear Technologies Ltd to register the following European trademark:
For classes of goods and services:
Class 9: ‘Personal computers; laptop computers; handset and tablet mobile digital electronic devices for the sending and receiving of telephone calls and/or any digital data and for use as a handheld computer; apparatus for recording, transmission or reproduction of sound or images; videophones, video-tablets, pre-recorded computer programs for personal information management, database management software, electronic mail and messaging software, paging software, computer hardware, software and firmware, namely operating system programs, application development computer software programs for personal and handheld computers or handheld mobile digital electronic devices; computer, handheld and mobile handset device peripherals products; parts, fittings and accessories for all the aforesaid goods’;
Class 35: ‘Providing consultancy on digital marketing; providing CRM solution and business solution design services’;
Class 42: ‘Maintenance and updating of computer software; providing information concerning computer software via the internet and other computer and electronic communication networks; computer network services; providing consultancy on networking, webpage design; providing server hosting services; providing domain management services; provision of software applications for handheld, tablets, personal computer and laptop computer devices and data centre management; technical consultancy; all aforesaid services also as business to business and all aforesaid services also as business to consumer or consumers’.
Against this application an opposition was filed by Apple on the ground of its following earlier figurative trademark:
For classes of goods and services:
Class 9: ‘… Computers, tablet computers, computer terminals, computer peripheral devices; computer hardware; … digital music and/or video players; MP3 and other digital format audio players; … handheld and mobile digital electronic devices for the sending and receiving of telephone calls; … computer software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multi-media content, software featuring musical sound recordings, entertainment-related audio, video, text and multi-media content, computer software and firmware for operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; … computer hardware and software for providing integrated telephone communication with computerised global information networks; electronic handheld devices for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server …’;
Class 35: ‘… Retail store and online store services in the field of entertainment featuring music, video, … musical works, pre-recorded audio and audio-visual works and related merchandise, and music related electronic products, via the Internet and other computer, electronic and communications networks …’;
Class 42: ‘… Application service provider (ASP) services featuring software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multimedia content, and software featuring musical sound recordings, entertainment-related audio, video, text and multimedia content; providing temporary internet access to use on-line non-downloadable software to enable users to program, audio, video, text and other multimedia content, including music, concerts, videos, radio, television, news, sports, games, cultural events, and entertainment-related programs …’
Initially, the EUIPO upheld the opposition, the main argument for which was the proved reputation of Apple’s trademark among the consumers in the EU.
In the appeal, however, The General Court annulled this decision stating that EUIPO erred in its assessment. The reasons for this conclusion were that even though Apple’s sign has a reputation, which broadens its protection scope, this can be an argument only in a case that both trademarks are phonetically, visually and conceptually similar. In the case at hand, this is not true.
In that regard, it should be noted, first, that it is admittedly true that each of the conflicting marks may be described as using the image of a fruit. However, as all the parties to this action also argue, the mere fact that there is a generic term which includes the terms used to describe the semantic content of the marks at issue is not a relevant factor in the context of the conceptual comparison. In the same vein, it should be borne in mind that the examination of the similarity takes into consideration the conflicting marks as they have been registered or as they have been applied for. Accordingly, it should be observed that the conflicting marks evoke the concept of ‘fruit’ only in an indirect manner. It follows from the considerations set out in paragraphs 62 and 63 above that the conflicting marks will not be perceived as depicting two unidentifiable fruits, but rather as (i) an apple with a bite taken out of it, possessing a leaf, and (ii) a pear with a stem. In those circumstances, it is inconceivable that the relevant public displaying a high level of attention will use the term ‘fruit’ instead of ‘pear’ or ‘apple’ when referring to the conflicting marks.
Next, it should be borne in mind that, according to the case-law cited in paragraphs 22 and 61 above, the comparison of the conflicting marks must be based on the overall impression given by them, by reference to the intrinsic qualities of those marks, and, moreover, conceptual similarity arises from the fact that both marks use images with a similar semantic content. These considerations counter the taking into account of factors such as those mentioned in paragraph 32 of the contested decision, which are not based on the perception of the semantic content of the images used by the conflicting marks, as they have been registered or as they have been applied for, but which are distant from the actual depiction of them. The protection which is granted to an earlier figurative mark does not apply, in the absence of commonalities with the depiction of the mark cited in opposition, to the general category of phenomena that it depicts. The Board of Appeal was therefore wrong to take the view that the marks at issue could be regarded as being conceptually similar on the sole ground that the fruits which they depicted shared several characteristics in real life.
Case T‑215/17, Pear Technologies Ltd v European Union Intellectual Property Office (EUIPO)
Peter Schramm и Guillaume Fournier published an engaging article for Lexology which reveals some problem for the US company Apple to register its word mark APPLE in Switzerland.
In the case at hand, the local Patent Office refused the company’s wordmark for the following goods: in Class 14 – jewellery goods and in Class 28 – games and playing cards, electronic games, manually operated and electronic computer games, video games, interactive games and interactive computer toys.
According to the Office in the case of jewellery, apple is widely used as their form due to which it is descriptive.
Regarding toys and computer games, the Office considers that apple as a fruit is a common form either for their material creation in the case of physical toys or as an image and motive in the case of computer games.
This comes to show how important submitting of pieces of evidence for acquired distinctiveness is concerning such marks especially in countries such as Switzerland where the interpretation for descriptiveness and distinctiveness could be quite interesting.