August 15, 2022
In 1997 (Case T-26/21), 1998 (Case T-27/21) and 2005 (Case T-28/21), Apple Inc obtained an EU trade mark registration for the word sign THINK DIFFERENT in relation to computers, computer terminals, keyboards, computer hardware, software and multimedia products (the Marks).
On 14 October 2016, Swatch AG, applied for revocation of the Marks, claiming that they had not been put to genuine use for the goods concerned for an uninterrupted period of five years pursuant to Article 51(1)(a) of the Trade Mark Regulation (207/2009/EC).
In August 2018, the Cancellation Division of EUIPO revoked the Marks in respect of all goods concerned, with effect from 14 October 2016.
The appeals brought by Apple were dismissed by the Fourth Board of Appeal. The BoA said that Apple had to provide proof of genuine use of the Marks in the EU during the five years preceding the date of Swatch’s application for revocation, i.e., from 14 October 2011 to 13 October 2016. Apple had distinguished two periods of use: (i) in a marketing campaign from 1997 to 2000 for iMac computers; and (ii) on the box packaging of iMac computers from 2009 and throughout the relevant period. The BoA found that the marketing campaign predated the relevant period by more than ten years and could not therefore be considered. As for the second period, the BoA found that because the images submitted only showed use of the Marks in a single place on the packaging, in small text, next to the list of technical specifications, it did not amount to proof of genuine use. Further, it found that the relevant public would perceive THINK DIFFERENT as a promotional message inviting it to “think differently”, i.e., to “think outside the box”, rather than as an identifier of origin. The BoA did not, therefore, consider it necessary to assess whether the worldwide sales figures for iMac computers from 2009 were sufficient to demonstrate genuine use of the Marks.
Apple appealed to the General Court.
Apple submitted that the BoA had not taken into account the high level of attention of the relevant public when assessing whether the Marks had been put to genuine use. It said that the BoA had disregarded the case law showing that consumers pay a high level of attention when purchasing durable, technical goods and will closely inspect the technical specifications. It disputed the BoA’s conclusion that the relevant public would carelessly overlook the labels on the iMac packaging which displayed the specifications and bore the Marks.
The GC found that even if the BoA had not considered the high level of attention of the relevant public when buying computers, that did not have any bearing on its conclusion that the Marks accounted for only an insignificant space next to the barcode on the packaging. In any event, Apple had not demonstrated that such consideration would have led the BoA to find that the consumer would examine the packaging in any detail and that he or she would pay particular attention to the Marks.
Further, the GC said, although it was true that sometimes computers are sold on a self-service basis, displayed in their packaging on shelves, they are also often stored somewhere that is not directly accessible to the public (e.g., in a storeroom), meaning that consumers do not examine the packaging before purchase. Instead, they try out the models in the shop, which are displayed without their packaging, and consult technical sheets next to each product. Computers may also be purchased online. Therefore, it was not correct that consumers are always able to inspect the labels on iMac computer packaging before purchasing.
Apple also complained that the BoA had wrongly found that the sales figures for iMacs related only to the UK, Finland, Denmark and Germany. It claimed to have sold more than four million iMacs under the Marks during the relevant period throughout the EU, as set out in a witness statement from its legal director dated 23 March 2017.
The GC said that, since the witness statement was from an employee of Apple, it did not have the same credibility as a statement from a third party who was independent of the company. Therefore, the statement was insufficient on its own and needed to be corroborated by further evidence. The annual reports attached to the statement did not confirm the claim that more than four million iMacs had been sold under the Marks throughout the EU; they only contained information on the net worldwide sales.
Apple also said that contrary to the BoA’s reasoning, the joint use of multiple marks on the packaging of its iMacs did not undermine the function of the Marks. In its view, the Marks were used jointly but autonomously with the other marks affixed to the iMac packaging, as they were set clearly apart.
The GC said that while it was true that there is no rule that a proprietor must prove the use of its earlier mark on its own, independently of any other mark or any other sign, a registered mark used in conjunction with another mark must continue to be perceived as indicative of origin for that use to be “genuine use”. The BoA had not based its conclusions solely on the finding that the word mark “Macintosh” on the iMac packaging was placed next to the Marks. On the contrary, the main ground for its decision was that some of Apple’s evidence fell outside the relevant period and that the images produced by Apple showed the Marks in a single place on the packaging, in small text, next to the barcode. Therefore, the BoA had not erred.
Apple also argued that case law did not require the Marks to be affixed to a particular place on the packaging in any particular size. The GC said that genuine use can be found only where the mark is used to guarantee origin. Here, the Marks had not been affixed to the packaging in such a way as to draw the consumer’s attention. Accordingly, their use did not amount to use as trade marks, i.e., to indicate origin.
Further, Apple criticised the BoA for finding that the use of the Marks would have been understood by consumers as a promotional message and that they were devoid of any distinctive character.
The GC said that in revocation proceedings for lack of genuine use, the distinctive character of the Marks had nothing to do with whether Apple had in fact proved genuine use. In any event, Apple’s argument was based on a misreading of the BoA’s decision. The BoA did not deny that the words THINK DIFFERENT had distinctive character but had found their distinctive character to be weak.
Contrary to what Apple claimed, the GC said that the BoA’s conclusion on the distinctiveness of the Marks was not contradicted by a body of evidence aimed at proving that they had been put to genuine use. While it was true that the evidence of genuine use included numerous press articles noting the success of the advertising campaign entitled THINK DIFFERENT at the time of its launch in 1997, those press articles predated the relevant period by over ten years.
The appeal was dismissed and the earlier decision revoking Apple’s Marks was upheld. (Joined Cases T-26/21 to T-28/21 Apple Inc v EUIPO (THINK DIFFERENT) ECLI: EU:T:2022:350 (8 June 2022) — to read the judgment in full, click here).