IWATCH not a part of the iFamily

Apple Inc v Arcadia Trading Ltd [2017] EWHC 440 (Ch)

Apple applied for a trade mark for ‘IWATCH’ however Arcadia has opposed the application on the following ground:

1. 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 ‘IWATCH’ is descriptive on the grounds that ‘i/I’ is an abbreviation for ‘internet’ or ‘interactive’. However, Apple argued the ‘i/I’ was a commonly used prefix with its products.

In the hearing, it was recognising by the Officer ‘I’ is indicative of ‘internet’ as can be seen in ‘BBC’s iPlayer’ when used in conjunction with ‘watch’ it is “entirely descriptive of a watch-like device with internet connectivity.”

The hearing Officer decided ‘IWATCH’ 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 ‘i/I’ as a prefix has acquired distinctive character, having been used in a family of prefix marks such as ‘iPod, iPhone’ etc.

Arnold J found that ‘IWATCH’ cannot have acquired character from its predecessors use of ‘i/I’ under the s.3(1) Trade Marks Act 1994 proviso. He also stated that Apple’s use of ‘I’ 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 ‘MACCOFEE’ opposed by McDonalds, being that is takes unfair advantage of McDonalds registered trademark ‘Mc’. 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, Apple’s 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.