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April 1, 2017

High Court rules on iWATCH trade mark

The High Court has dismissed an appeal by Apple against the decision of the Intellectual Property Office (IPO) to refuse to register the trade mark iWATCH in respect of various goods including computers, computer software and other related goods. The trade mark was permitted however for goods including security devices, cameras, computer peripherals and radios.

A trade mark is something that differentiates the product or service from others in the same market. When registering a trade mark you need to provide a list of the goods and/or services that the trade mark is used for. The goods and services are divided into 45 different classes and should cover products that the mark is currently being used for and those which it may be used for in the future. Registration then gives the trade mark owner the statutory right to exclusive use of the mark for the goods and services for which it was registered.

The application for iWATCH was initially submitted by a third party and was assigned to Apple in 2015. The registration was refused for the goods listed above by the IPO on the grounds that the mark was descriptive of the goods applied for. Trade marks that are descriptive of the goods or services applied for cannot be registered unless the applicant can show that the mark has acquired distinctive character.

Apple argued, as one of their three grounds of appeal, that the original hearing officer was wrong to conclude that iWATCH was descriptive for computer software. They stated that computer software was not so closely related to smart watches to make the trade mark descriptive. The hearing officer however discussed that the ‘I’ prefix would most likely be viewed as ‘internet’ which when combined with the entirely descriptive term ‘watch’ results in iWATCH being descriptive of a watch like device with internet. The High Court agreed stating that smart watches depend for their operation on the computer software they incorporate.

Apple also submitted that their previous trade marks, for example iPhone, iPod and iPad should be considered when assessing acquired distinctiveness as they share the I-prefix. The court found that the average consumer would not necessarily perceive the trade mark iWATCH as denoting goods from the same source as the earlier trade marks. There is also evidence of third party use of trade marks with the ‘I’ prefix for example iPlayer. The watchmaker Swatch also holds a trade mark for iSwatch and they actually opposed the original application. Even if the hearing officer was wrong to conclude that iWATCH could not acquire distinctive character as a result of the previous trade marks, Apple had not shown that iWATCH had acquired a distinctive character in any event.

Although in 2015 Apple decided to launch their smart watch under the name Apple Watch, this case still serves as a useful reminder of the limitations of registering trade marks that are descriptive of the goods and/or services being applied for. It also demonstrate how trade mark law will continue to develop with the advance of technology.

If you would like advice on protecting your brand or registering a trademark please contact the Commercial and IP team by emailing employment@greenawayscott.com or visit our website at www.greenawayscott.com.

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