Apple had previously tried and failed to register it in the UK Trade Marks Registry, having been opposed by Arcadia Trading Ltd (not in any way related to Philip Green’s Arcadia Group). In the Registry’s published decision going back to August 2016, it had found that the mark was descriptive of a smartwatch. Apple decided to appeal that decision to the High Court. In a decision handed down by Arnold J this morning, the High Court rejected all three of Apple’s grounds of appeal, and required Apple to pay Arcadia’s costs.
Apple were appealing on 3 grounds. First they argued that the Registry had been wrong to decide that smartphones in the shape of a watch fell within the particular class (class 9 covering computer software/hardware and accessories) in which Apple had applied for protection. Secondly they claimed that the Registry was wrong to find that IWATCH was descriptive for computer software. Third, Apple sought to argue that by virtue of the use made by it of other “i” marks (including iPhone and iPad) it should be entitled to protect IWATCH by virtue of the “acquired distinctiveness” associated with that use.
As a specialist in intellectual property matters, the judge had no problem rejecting all of Apple’s arguments. The fact that the class of goods that Apple had applied for – computers etc – did not specifically refer to “smartwatches” did not stop it from falling within that class. A smartwatch could properly fall within one of two classes, class 9 (computers) or class 14 (watches). Secondly, the judge had no problem in deciding that the trade mark was descriptive of computer software incorporated in a smartwatch. Finally, Apple’s arguments about iPods and iPads did not provide any evidence that this particular mark had acquired distinctiveness, or as he put it “it does not necessarily follow that a trade mark which lacks inherent distinctive character can acquire distinctive character as a result of the use of different trade marks with a common feature”. The fact was that both the “I” prefix and the -WATCH suffix were descriptive as was the combination of the two.
This decision represents a “nail in the coffin” in relation to Apple’s latest attempt in the UK to protect its technology prefixed with the initial I or i. They would have stood a better chance of protecting the term IWATCH had they, for example, excluded smartwatches from their trade mark application. They chose not to do so, presumably for the very reason that it would negate the protection that they most wanted: to protect their smartwatch, even though it is in fact currently called an Apple Watch. Presumably, following this adverse decision against them, they aren’t going to be changing that name anytime soon.
Kempner and Partners acted for the successful Arcadia Trading Limited.