Technology giant Apple has had its application to trade mark the word ‘IWATCH’ in relation to its smartwatch and smartphone in the shape of a watch refused.
Apple applied to the European Intellectual Property Office (EUIPO) to register ‘IWATCH’ as a trade mark in Class 9 of the Nice Classification, which covers various goods, including computers and computer software. The EUIPO refused to register the trade mark ‘IWATCH’ on the grounds that the mark was descriptive of the goods and devoid of distinctive character. The EUIPO had previously refused to register the trade mark in Class 14 which covers watches.
On appeal to the High Court, Apple argued that the word ‘IWATCH’ was not descriptive of computer software. Apple’s position was that as the Class 9 specification did not cover smartphones in the shape of watches, the word was therefore distinctive and capable of registration as a trade mark.
The High Court disagreed and upheld the EUIPO decision. Part of the High Court’s reasoning was that smartwatches were defined on whatis.com as ‘a wearable computing device that closely resembles a wristwatch or other time-keeping device’. Smartwatches therefore had dual functionality such as internet and telephone connectivity, which would be covered by the goods listed in Class 9 as ‘computers, computer hardware, wireless communication devices; audio and video devices’. The word ‘IWATCH’ therefore described the characteristic of the goods to be registered.
The High Court considered that Apple’s well-known use of ‘iPhone’, ‘iPad’, ‘iPod’ and ‘iTunes’ did not mean that the word ‘IWATCH’ was distinctive to Apple. In particular, as Apple was seeking to register ‘IWATCH’ in any combination of upper or lower case letters and not specifically ‘iWatch’ which was the usual style used by Apple, this was not sufficiently distinctive. In any event, as Apple has no ‘iWatch’ products on the market (their smartwatch is marketed as the ‘Apple Watch’) and other entities had registered marks with an ‘i’ prefixing the word (e.g. the BBC’s use of ‘iPlayer’), the average consumer would not perceive ‘IWATCH’ as representing Apple’s goods only.
This case shows the impact of technology on the High Court’s approach to relevant trade mark classifications. It is also interesting to see the Court’s view of consumers’ brand association. Although the Court was shown evidence of the use of the prefix ‘i’ by third parties, it still seems very likely that consumers would associate the word ‘iWatch’ (presented in this format) with Apple, given their dominant use of words pre-fixed with ‘i’ within the technology sector.