Apple Inc v Arcadia Trading Ltd

For absolute-grounds examination, a broad specification must be assessed by reference to every product falling within its terms. A multipurpose product may properly fall within more than one Nice Classification class. Smart watches therefore fall within both Class 9 and Class 14 where their functions include computing or communication. Software incorporated in such products may be sufficiently closely connected to them to be descriptive of the software. The court left open the broader legal question whether a mark lacking inherent distinctiveness can acquire distinctiveness through use of different marks sharing a feature. On the evidence, however, use of other “i”-prefixed marks did not establish that IWATCH had acquired distinctive character.

Brightflash USA LLC applied to register IWATCH for goods in Classes 9 and 14. The application was assigned to Apple Inc. Arcadia Trading Ltd opposed registration in Class 9, alleging descriptiveness, lack of distinctive character and bad faith.

The hearing officer rejected bad faith but upheld the opposition for specified Class 9 goods, including computers, software, communication devices and related accessories. He accepted the application for other goods. Apple appealed the findings on classification, descriptiveness of computer software and acquired distinctiveness. The central issues were whether the specification covered smart watches, whether IWATCH was descriptive of the relevant goods, and whether it had acquired distinctive character through use of other “i”-prefixed marks.

Appeal dismissed.

1. Standard of review. An appeal from the Registrar is a review. The court should show particular caution before interfering with a multifactorial assessment, but must allow the appeal where, after anxious consideration, the decision is wrong. The principles summarised in TT Education Ltd v Pie Corbett Consultancy Ltd (O/017/17) were equally applicable.
2. Classification and scope of specification. A multipurpose product may be classified in more than one Nice Classification class. The absence of the specific term “smartwatches” from the tenth edition did not prevent smart watches from falling within Class 9, because their computing and communication functions gave them dual functionality. The hearing officer was therefore entitled to find that the broad Class 9 terms covered smart watches.
3. For trade mark examination, a mark must be free from objection in relation to any goods falling within the relevant category. The court applied the principle in Meric v Office for Harmonisation in the Internal Market (Trade Marks and Designs) Case T-133/05 to absolute as well as relative grounds. The hearing officer had not construed the specification by reference to Apple’s commercial intentions.
4. The hearing officer’s classification determination was final in proceedings of this kind under section 34(2) of the Trade Marks Act 1994, consistently with Omega Engineering Inc v Omega SA [2010] EWHC 1211 (Ch) and Red Bull GmbH v Potters Ltd [2013] RPC 13.
5. Computer software. Smart watches depend on incorporated computer software. Applying the reasoning in FOURNEAUX DE FRANCE Trade Mark (O/240/02), the court held that the mark was descriptive of computer software incorporated in smart watches.
6. Acquired distinctiveness. The court did not need to reach a concluded view on whether Article 3(3) of the Directive and the proviso to section 3(1) permitted a mark to acquire distinctiveness through use of different marks sharing a common feature. Even assuming that proposition was legally arguable, Apple had not proved acquired distinctiveness. The “i”-prefix and “-WATCH” suffix, and their combination, had been found descriptive; use of IPHONE, IPAD, IPOD and ITUNES did not establish that IWATCH, including in ordinary forms such as “Iwatch”, denoted goods from Apple. Third-party use of “i”-prefixed marks reinforced that conclusion.

The appeal was brought to the High Court from the hearing officer’s written decision dated 30 August 2016 (O/412/16). The hearing officer had upheld Arcadia’s opposition for specified Class 9 goods but allowed the application to proceed for other goods. The High Court dismissed Apple’s appeal.