Think differently: Think about proof of use of the mark! – Trademark

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On June 8, the Court of First Instance of the European Communities ruled on a dispute which has been opposing two famous companies for more than five years: the Californian Apple Inc and the Swiss watchmaker Swatch AG. Carole Roger examines the implications.

In 1997, Apple launched its iconic advertising campaign Think differently (used until 2002) featuring, in black and white, celebrities such as: Albert Einstein, Bob Dylan, Martin Luther King, John Lennon, Muhammad Ali, Maria Callas, Pablo Picasso, Mahatma Gandhi, and many more others (see the video here: Apple – Think Different – Full Version).

This slogan was the subject of three European Union trademark applications in class 9 in 1997 (no. 671321), 1998 (no. 845461) and 2005 (no. 4415063). In October 2016, Swatch filed three revocation requests, with Swatch operating its own “Tick Different” advertising campaign. The two parties have since been embroiled in a dispute over several countries (Portugal, Czech Republic, Israel, Albania, Moldova, Switzerland, Iceland and Romania).

Trademark rights: establishment of genuine use

In defense of the revocation action, Apple filed various proofs of use, such as:

  • A testimony from its legal directorgiving the history, details of the launch of the advertising campaign, rewards received for the campaign, advertising expenditure, sales figures from 1994 to 2016. This statement was accompanied by undated photographs, labels on the packaging an iMac;

  • An article from the site as good as
    various magazine articles: Forbes2012-2015, The Telegraph (2012) and Time (2015) regarding Apple;

  • Various articles dated from 1998 to 2011 on the marketing campaign itself (Wall Street Journal, Forbes, Advertising Age);

  • Awards and photos from the book
    1998: The year of Think differently ;

  • Many other items published between 1997 and 2016 on the advertising campaign, as well as parodies, including the Broadway musical “Nerds, A Musical Dot-Comedy”; and

  • Dated annual reports (2009, 2010, 2013, 2015)

In August 2018, the EUIPO Cancellation Division pronounced the revocation of the three brands and the appeals brought by Apple were rejected at second instance. Apple tried again before the European Court, but without more success.

The judgment of the European Court: the question of proof

First, the Court of First Instance of the European Communities rejected the new evidence provided in its June 8 decisionbecause its objective is to control the legality of the decisions delivered by the boards of appeal, and not to examine new elements – even if these are provided with the aim of re-examining the circumstances of the case (cf. judgment of 27 February 2018 Graberg v EUIPO).

It then re-examined the evidence to ensure that it had been correctly assessed for the period concerned by the revocation (five years preceding the request for revocation, ie from October 14, 2011 to October 13, 2016).

The judgment of the European Court: assessing genuine use

As noted by the Court, assessments of genuine use must be based on an overall assessment taking into account all the elements of the case, and must be demonstrated in a concrete and objective manner. In his assessment, he noted the following points:

  • Target audience and photographs/labels provided: While it is recognized that the level of attention of consumers affected by this type of product is high, the labels provided showed the brand name in a single place, on an insignificant space on the packaging, next to the code -bars and after long technical specifications. Even this type of consumer does not examine the packaging in such detail, so these items could not establish serious use due to their size and location. Consequently, the Court of First Instance did not consider that it was a use of a mark.

  • Computer sales figures in the EU: The statement of Apple’s general counsel, who is not an independent person, is logically considered less reliable than an independent third party. This declaration only is therefore not sufficient and must be corroborated by other evidence. As it turns out, that was not the case here, as the reported sales figures only contain information on worldwide net sales of iMac computers with no breakdown for the EU.

  • Use in combination with another brand Macintosh or Mac: If this type of combined use can in theory be accepted, it is a case-by-case assessment, and provided that the mark which is combined continues to be perceived as an indication of the origin of the product. Here, Think Different appeared in a smaller size than Macintosh in the same format.

  • Press articles mentioning the success of the advertising campaign when it was launched: These elements predate the period to be taken into consideration by more than 10 years. They are therefore not sufficient either.

Past notoriety cannot come to the rescue of a mark that is no longer used. It is up to each trademark holder not only to exploit his trademark, but also to ensure its use over time, in a regular and adequate manner if he wishes to safeguard his rights against actions for revocation. Not only that, but they must be able to provide acceptable proof of such use when such actions occur.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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