EU General Court dismisses Apple’s appeal against revocation of ‘THINK DIFFERENT’ EU trade mark

For long-time Apple users, followers, and fans, the phrase ‘THINK DIFFERENT’ will undoubtedly ring a bell or two. Do a quick Google search and you will find many sites explaining the history and significance of the phrase to Apple and its branding, and how it brought a new wave of popularity and interest to a floundering Apple company as of 1997.

With the history of the trade mark in mind, it was a bit of an initial shock to hear that, in the latest development from the EU General Court (GC; joined cases T-26/21 to T-28/21), an appeal against the revocation of the mark was dismissed. However, upon further examination, it appears that the outcome was to be expected, given that revocation proceedings were based on a lack of genuine use of the mark between 2011 and 2016.

Trying to follow Apple's words of wisdom...

Background

On 14 October 2016, Swatch AG filed applications for revocation against 3 of Apple’s registered trade marks for ‘THINK DIFFERENT’, covering Class 9 goods including computers, computer terminals, keyboards, printers, display units, and terminals – on the basis that there had not been genuine use of the marks for such goods for an uninterrupted period of five years.

In proceedings, Apple submitted evidence to establish such use, which included:

• A witness statement from the director of Apple’s legal department, containing information on the history of the undertaking, the launch of the advertising campaign entitled ‘THINK DIFFERENT’, the awards received for the campaign, advertising expenditure and sales figures from the years 1994 to 2016, as well as undated photographs of the labels affixed to iMac computer packaging, all bearing the contested marks;
• Articles relating to Apple from various news sites dating from 2012 and 2015, and articles appearing in magazines in 1998 and 2011 containing information on the marketing campaign run under the contested marks; and
• Annual reports for 2009, 2010, 2013 and 2015.

On 24 August 2018, the Cancellation Division revoked the contested marks in respect of all of the goods in Class 9. Appeals were dismissed by the Fourth Board of Appeal (BoA) on the basis that evidence had to prove genuine use of the mark in the five years preceding the Cancellation Division’s decision (i.e., from 14 October 2011 to 13 October 2016). It was determined that occasional use of the marks during this time on the Apple website to commemorate famous people or special events were isolated and ephemeral uses. Further, upon the finding that evidence had been only produced in relation to computers and computer accessories in Class 9, it was determined that use of the marks as presented (in a single place in small script next to a list of technical specifications on iMac packaging, accompanied by the word mark ‘Macintosh’ in font of the same size) would not amount to genuine use, as the relevant public would perceive the marks as a promotional message, to ‘think outside the box’. It was also noted that this conclusion was reached by the BoA without deeming it necessary to assess whether sales figures for iMac computers since 2009 were sufficient to demonstrate genuine use of the marks.

GC judgment

The scope of the appeal only concerned part of the class 9 goods for which the marks covered, including computers and computer peripherals, on the basis that no evidence for the other class 9 goods had been produced in the course of the proceedings. After determining that there was no infringement of the right to be heard and that there was no breach of the obligation to state the reasons behind the decision, the GC moved onto the substantive part of the analysis - the question of genuine use.

Apple had submitted:

• First, that the BoA failed to take due account of the level of attention of the relevant public or of the significance of the visual inspection of the packaging of iMac computers and of their technical specifications at the time of their purchase;
• Secondly, that the BoA erred in finding that the applicant had only provided sales figures relating to the use of the contested marks in certain Member States of the EU (the UK, Finland, Denmark and Germany); and
• Thirdly, that the BoA introduced new criteria for providing genuine use by finding that it was for the applicant to demonstrate that the contested marks were used in isolation and affixed to a particular place on the goods or their packaging and in large print.

... but it's kind of hard, you know?

Addressing the first ground of appeal, it was not disputed that computers and computer accessories were highly technical and innovative goods, nor that the consumer would display a high level of attention when purchasing such goods. However, the GC found that, even if a high level of attention of the relevant public had not been considered, it would not have any bearing on the fact that the contested marks accounted for “only a rather insignificant space next to the barcode”. Apple had also not demonstrated that a high level of attention would result in the consumer examining the packaging in detail, and that they would pay particular attention to the contested marks.

On the second ground of appeal, the GC also dismissed Apple’s claims that the BoA had wrongly disregarded the sales figures of iMac computers throughout the EU provided in a witness statement. Whilst it was claimed that 4 million iMac computers were sold during the relevant period in the EU, it was noted that such a statement, which had been made by the director of Apple’s legal department, could not have the same reliability and credibility as a statement from a third party, and that no further supporting evidence to that effect was provided. Whilst the annual reports provided as evidence contained information on net world-wide sales of iMac computers, no details were provided as to the sales figures of iMac computers in the EU.

Finally, regarding the third ground of appeal (the application of incorrect and inadequate criteria of genuine use of the contested trade marks), the GC began by noting that, whilst the joint use of another mark (in this case, the word mark ‘Macintosh’) with the contested marks could not, in itself, undermine the function of the other mark as a means of identifying the goods concerned, the contested marks would still have to be perceived as indicative of the origin of the product for its use to be considered as ‘genuine use’. As the GC pointed out, the decision of the BoA had been made on the basis that the evidence presented by Apple had fallen outside of the relevant period, and that the images produced of the mark on iMac packaging could not be regarded as genuine in light of the size and location of the contested mark. In particular, use of the contested marks on iMac packaging were not regarded as according with their essential function of indicating the commercial origin of the goods concerned. In this regard, the GC were keen to note that circumstances of the present case was distinct from the previous cases of T-418/03 LA MER, T-353/07 COLORIS, and T-391/15 ALDIANO (concerning cosmetics, paint products and alcoholic beverages respectively), on the basis that those products were very different from the technological products in the present case, sold in different shops and for substantially lower prices. The GC concluded by reiterating comments by the BoA in relation to distinctive character (namely that ‘Think Different’ had a “rather weak distinctive character”), and how these comments were irrelevant in the present revocation proceedings.

Comment

This case is a useful reminder that trade mark registrations may not last forever, despite the legacy behind them - such trade marks must still be used in accordance with their essential function.

Also, whilst the focus has been on Apple, note should also be made of the party which launched the revocation proceedings in the first place - Swatch. Apple and Swatch have engaged in many a trade mark dispute (for example, see my previous article regarding the appeal of Swatch’s ‘ONE MORE THING’ trade mark application in the England and Wales High Court), and the present case inevitably brings to mind previous clashes between Apple’s ‘Think Different’ trade mark and Swatch’s ‘Tick Different’. One thing is sure - the trade mark clashes between the two are unlikely to end here, and it will be interesting to see how things progress.

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