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.