The boundaries of the words ‘descriptive’ and ‘distinctive’ referring to a character of trademarks have just experienced a seismic shift. The innovative computing giant, Apple initially had its trademark for ‘iWatch’ for Watches accepted by the United Kingdom Intellectual Property Office (UKIPO) only to have its application opposed and successfully thrown out by Arcadia Trading Ltd. What followed was an unsuccessful appeal to the English High Court. This leaves companies with difficult questions to face about their own long term Intellectual Property (IP) strategies. ‘iWatch’ can be seen as another example of Apple’s trend for adopting “themed marks”, namely a succession of similar marks all adhering to the same theme, in this case using the prefix ‘I’ before the name of the product. ‘IPHONE’ and ‘IPAD’ represent other clear examples of their brands.
In the opposition hearing the decision of the UKIPO, was to deny registration for the trademark ‘IWATCH’. The reasoning was that the Mark was fundamentally ‘descriptive’ and lacked ‘distinctive’ character.
Why did the UKIPO deny the registration?
The recent case in the English High Court heard on the 10th of March 2017, ‘Apple Inc v Arcadia Trading Ltd’, Apple appealed the decision of the UKIPO on three grounds of which the latter two related specifically to the issue of the ‘descriptive’ and the ‘distinctive’ character of the ‘iWatch’ Mark. Mr Justice Arnold sitting in the High Court of Justice Chancery Division rejected all the grounds for appeal. He suggested that the prefix ‘I’ would probably be taken to mean the word ‘Internet’ when used in conjunction with the entirely descriptive word ‘watch’. Therefore, making the Mark ‘IWATCH’ appear to be describing the characteristics of the product. Further, the court also construed that the ‘iWatch’ had failed to acquire distinctive character, the court’s reasoning was a trademark must acquire distinctive character based upon its own merit, it is not enough for a Mark to inherit distinctiveness from other ‘themed marks’.
This is a concerning development for companies which operate an IP strategy based upon the adoption of ‘themed marks’. This case has demonstrated, that in the United Kingdom, it is not enough to demonstrate ‘distinctiveness’ through the presence of a series of similar pre-existing Marks. Further this case has also suggested just as a trademark can gain ‘distinctive’ character, it can also gain ‘descriptive’ character. It is evident that through the change of language and associations used by the consumer, a once non-descriptive initial such as ‘I’ can gradually become linked and used to describe a function of the product i.e. Internet access.
Whilst the ability to ‘see around corners’ is not an option available to companies, it appears that general awareness of the evolving marketplace, and consumer ‘intelligence’, may help to settle upon a future-proof IP strategy.