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10 June 2022Trademarks

EU court dismisses Apple’s bid to overturn Swatch revocations

Appeals by Apple against European Union Intellectual Property Office (EUIPO) decisions that revoked ‘Think Different’ trademarks have been dismissed.

On Wednesday, June 8, the EU General Court rejected Apple’s appeals and affirmed the EUIPO’s Fourth Board of Appeal’s decision to dismiss Apple’s first round of appeals against the decisions of the EUIPO’s Cancellation Division.

Back in 1997, Apple obtained registration of the word sign ‘Think Different’ as an EU trademark, covering goods including IT products such as computers, computer terminals, keyboards, computer hardware, software and multimedia products. Apple applied for subsequent ‘Think Different’ trademarks in 1998 and 2005.

Then, in 2016, Swatch filed three applications to revoke the contested marks, claiming that the trademarks hadn’t been put to genuine use for the goods concerned for an uninterrupted period of five years.

Two years later, the Cancellation Division revoked the contested marks in respect of all goods concerned. According to the court, Apple needed to provide proof of genuine use during the five years preceding the date of revocation (which had been set at 14 October 2016).

As proof, Apple had provided a marketing campaign and use on the box packaging of iMac computers since 2009. The court found that the campaign predated the relevant period by more than ten years and ‘Think Different’ was written in small letters next to the list of technical specifications, which given the technical nature of the goods, led the court to believe that the relevant public would perceive ‘Think Different’ as a promotional message.

Apple appealed against the decisions, but the Board of Appeal dismissed the appeals.

In January 2021, Apple brought three actions before the General Court. First, Apple alleged that the Board of Appeal had failed to take into account the high level of attention of the relevant public.

“In particular, it disputed the Board of Appeal’s conclusion that the relevant public would carelessly overlook the labels affixed to the packaging of an iMac computer which bore the contested marks,” said a press release from the court, outlining the decisions.

The General Court concluded that Apple failed to demonstrate that taking into consideration a high level of attention would have led the Board of Appeal to find the consumer would examine the packaging in any detail and pay particular attention to ‘Think Different’.

Apple also claimed that the Board of Appeal concluded that the contested marks were devoid of any distinctive character but, according to the General Court, Apple’s argument is “based on a misreading of the contested decisions”, as the appeals board attributed a “rather weak distinctive character”, and didn’t deny it altogether.

“The court notes that, contrary to what Apple claims, the Board of Appeal’s conclusion as to the distinctiveness of the contested marks is not contradicted by a body of evidence aimed at proving that they have been put to genuine use,” said the press release.

It added that the numerous press releases which noted the success of the advertising campaign were included in the items of evidence, but that they predated the relevant period by ten years.

The press release concluded: “The court holds that no infringement of the right to be heard can be found in this case. Furthermore, in its view, the Board of Appeal stated to the requisite legal standard, in the contested decisions, the reasons as to the question whether Apple had adduced proof of genuine use of the contested marks.”

Apple may appeal (on points of law only) to the Court of Justice of the European Union within two months and ten days of notification of this decision.

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