Apple Inc v Arcadia Trading Ltd  EWHC 440 (Ch)
Apple applied for a trade mark for ÂIWATCHÂ however Arcadia has opposed the application on the following ground:
- IWATCH is descriptive or devoid of distinctive character in relation to its registration under Class 9 of NICE
Apple registered the trade mark under both Class 9 covering computers, software and hardware and Class 14 covering watches and jewellery, and hence accordingly appealed this.
Arcadia argued that the application for ÂIWATCHÂ is descriptive on the grounds that Âi/IÂ is an abbreviation for ÂinternetÂ or ÂinteractiveÂ. However, Apple argued the Âi/IÂ was a commonly used prefix with its products.
In the hearing, it was recognising by the Officer ÂIÂ is indicative of ÂinternetÂ as can be seen in ÂBBCÂs iPlayerÂ when used in conjunction with ÂwatchÂ it is Âentirely descriptive of a watch-like device with internet connectivity.Â
The hearing Officer decided ÂIWATCHÂ is descriptive as to Class 9 (computers) and cannot proceed on this basis, which was subsequently upheld by Lord Justice Arnold in the Court of Appeal.
Apple appealed based on the argument that Âi/IÂ as a prefix has acquired distinctive character, having been used in a family of prefix marks such as ÂiPod, iPhoneÂ etc.
Arnold J found that ÂIWATCHÂ cannot have acquired character from its predecessors use of Âi/IÂ under the s.3(1) Trade Marks Act 1994 proviso. He also stated that AppleÂs use of ÂIÂ has always been in lowercase whereas this registration did not include such a restriction.
This decision can be juxtaposed to the registration of trade mark ÂMACCOFEEÂ opposed by McDonalds, being that is takes unfair advantage of McDonalds registered trademark ÂMcÂ. McDonalds had to provide evidence of such trade marks in constituting a family, and their having acquired distinctive character, which could be found in this case.
Despite the fact, AppleÂs appeal for registration of IWATCH under Class 9 has been opposed, the possibility of families of marks being used to show acquired distinctive character is a possibility.