Pankhuri Malik is an IPilogue Writer, IP Innovation Clinic Fellow, and an LLM Candidate at Osgoode Hall Law School.
On June 8, 2022, Apple took a hit to its trademark portfolio when it lost another trademark battle with Swatch, the famous Swiss watchmaker, before the General Court of the European Union. Through its judgment, the General Court upheld lower court decisions revoking Apple’s rights in its THINK DIFFERENT trademarks.
Apple v Swatch 3.0?
This case is not the first time Apple has lost in court to Swatch. In 2016, Swatch successfully opposed Apple’s trademark application for the mark “iWatch” before the UK Intellectual Property Office, forcing Apple to call its smartwatch “Apple Watch.”
Then in 2021, a UK High Court permitted Swatch to seek trademark protection for Steve Job’s famous phrase “One More Thing.” The Court did not find evidence of bad faith in Swatch’s application, though it noted that Swatch had filed it only to annoy Apple.
Now, Apple has lost its third, or rather fourth trademark battle against Swatch.
In 2016-2017, Apple and Swatch, locked horns regarding their “Think Different” and “Tick Different” marks. In 2016, Swatch filed three applications before the European Union Intellectual Property Office (EUIPO) seeking revocation of Apple’s “Think Different” marks on grounds of non-use. Then in 2017, Apple sued Swatch for trademark infringement against its mark “Tick Different”, an action it lost in 2019 before the Federal Administrative Court in Switzerland. Apple claimed that the mark was deceptively similar to its “Think Different” marks. But the court found that the marks were more dissimilar in the eyes of the average consumer.
Now, the proceedings emanating from Swatch’s revocation petitions have finally come to a head. In 2018, the Cancellation Division of the EUIPO revoked Apple’s rights in its “Think Different” marks, a decision that was upheld by the Board of Appeal in November 2020. On June 08, 2022 the General Court of the European Union dismissed Apple’s applications for review of the Fourth Board of Appeal’s decision.
The Turning Point
The crux of the issue came down to evidence. Swatch filed the revocation petitions on October 14, 2016, so Apple was required to present evidence showing “genuine use” of the mark in the immediately preceding five years. “Genuine use” of a mark can only be found when it has been used to distinguish the goods to identify their origin.
In Apple’s case, the mark “Think Different” was used extensively till 2002, when its use mostly faded with the launch of the MacBook. The court noted that the mark does not appear prominently on Apple’s products nor does it draw consumer attention. The court also stated that “Think Different” had not been used to satisfy the essential function of a mark; in essence, to identify the origin of the goods.
Apple was required to submit evidence corroborating its use in the five years immediately preceding Swatch’s applications. The court noted, however, that Apple’s evidence either does not show genuine use or falls outside the scope of the five years.
The decision effectively makes the mark “Think Different” fall in the public domain and is closely preceded by chatter about Apple’s unethical trademark practices. While this battle between the companies seems to have ended, it will be interesting to see if they will oppose each other again.