Ukraine: Iwatch Not Registrable As A Trade Mark For A Wearable Computing Device

In a decision exploring the boundaries of 'descriptive', the English High Court has ruled that IWATCH is not registrable for computers, computer software and certain related goods.

Trade mark law prohibits the registration of marks which are descriptive of the goods or services for which the registration is sought, unless the applicant demonstrates that, as a result of the use made of it, the mark has acquired distinctive character.

Apple acquired a third party's application to register IWATCH; the application was rejected by the UK Intellectual Property Office (UKIPO) in respect of goods in Class 14 and opposed by Arcadia in respect of goods in class 9.

In the UKIPO, the Hearing Officer was satisfied as to the registrability of IWATCH for the following goods in Class 9: "Security devices; cameras; computer peripherals; radios; accessories, parts, components, and cases for all of the foregoing goods."

However, the Hearing Officer upheld Arcadia's opposition, and so refused to permit the application to proceed to registration, in relation to the following goods in Class 9:

"Computer software; computers; monitors and monitoring devices; computer hardware; wireless communication devices; audio and video devices; global positioning system devices; accessories, parts, components, and cases for all of the foregoing goods."

Apple appealed to the High Court, in which Mr Justice Arnold considered the following questions and answered them as summarised below:

1. Was the Hearing Officer wrong to hold that the Class 9 specification covered smartphones in the shape of a watch or smart watches?

No. A multipurpose product could be classified in more than one class. The Hearing Officer had correctly determined that smartwatches had dual functionality and were proper to Class 9 as well as to Class 14. In order for a trade mark to be registrable in respect of a category of goods, it must be free from objection on absolute or relative grounds with respect to any goods falling with that category. A number of the Class 9 goods were broad enough to embrace smart watches, and so the Hearing Officer had not erred in considering registrability with respect to such goods.

2. Was the Hearing Officer wrong to hold that IWATCH was descriptive for computer software?

No. Smart watches depend for their operation on the computer software they incorporate; the Hearing Officer had not erred in concluding that the mark was descriptive of such software.

3. Was the Hearing Officer wrong to reject Apple's case of acquired distinctiveness?

No. The Hearing Officer had concluded that a trade mark (here, IWATCH) could not acquire distinctive character as a result of the use of different marks (such as IPHONE and IPAD) which shared a feature with the first trade mark (here, the I- prefix).  The judge was satisfied that none of the authorities relied upon by Apple (Nestlé v Mars Case C-353, Il Ponte Finanziaria v OHIM C-234/06, Future Enterprises Pte Ltd v EUIPO T-518/13) established that the Hearing Officer's interpretation of the legislation was wrong in this respect. However, conscious that the point had not received the "fullest of arguments", he declined to express a concluded view on this unless necessary to do so; and he decided that it was not:

The judge was satisfied that the Hearing Officer had correctly concluded that Apple had not established that IWATCH had acquired a distinctive character in any event. Apple had relied upon use of the marks "iPhone", "iPad", "iPod" and "iTunes". The judge agreed with the Hearing Officer that it did not follow that the average consumer would perceive the trade mark IWATCH presented, for example, in the form "Iwatch", as denoting goods from the same source.

The High Court's 10 March 2017 decision in Apple Inc v Arcadia Trading Limited [2017] EWHC 440 (Ch) is a case that demonstrates how trade mark law continues to adapt to technological developments and how brand owners may face limits as to consumers' (and the courts') brand-association of prefixes.

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