Intellectual Property Insights from Fishman Stewart PLLC
Newsletter – Volume 22, Issue 13

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The European Union Refuses to “THINK DIFFERENT”

By Linda M. Callaghan

Many people may remember Apple’s iconic trademark THINK DIFFERENT from the late 1990s. The advertising campaign made a big splash with both television and print ads featuring images of several famous influential leaders throughout time, such as Albert Einstein, Jim Henson, Martin Luther King, Jr. and even Steve Jobs himself. The campaign spanned nearly a decade and won several awards including an Emmy Award for Best Commercial. The mark is still used on packaging for the company’s iMac computers.

However, the General Court of the European Union recently held that Apple’s use of the mark was not genuine trademark use sufficient to prevent cancellation of its registrations. The court upheld a prior decision by the European Union Intellectual Property Office to cancel Apple’s three European Union trademark registrations for the mark in connection with computers and computer related products. The court cited insufficient use of the term in a trademark manner as the basis for its ruling. Although the court found that Apple’s use of the mark in the late 1990s, and for a period of about 10 years thereafter, constituted use as a trademark, it ultimately held that Apple’s use during the relevant period of examination for the proceeding, namely October 2011 to October 2016, did not rise to the level of genuine trademark use. Below is an example of Apple’s product packaging showing use of the mark during the relevant time period. 

The court took issue with the size and placement of the mark on the packaging and noted that consumers would likely overlook the small print located underneath the technical specifications. The court reasoned that such small font and placement was not likely to draw consumers’ attention, and thus, the mark did not identify the commercial origin of the products. By contrast, under U.S. trademark law, the above product packaging is acceptable to support a U.S. federal trademark registration and in fact was used to renew Apple’s U.S. registration for the mark as late as 2013.   

Nevertheless, the loss of Apple’s EU registrations is a big blow to the company given the notoriety of the mark and the fact that many people still associate the iconic mark with Apple. Apple has not yet commented on the decision. 

It will be interesting to see whether Apple continues to renew its other registrations for the mark in the future. One factor that may have an impact on Apple’s future course of action is its ongoing feud with the Swiss watch manufacturer Swatch AG, which had initiated the cancellation proceeding that resulted in the outcome in this case. Swatch and Apple are engaged in several contentious trademark battles. At any rate, this case serves as a good lesson for EU trademark registration owners: when it comes to proving genuine trademark use, size and placement matter!

 

Published June 24, 2022

Finny continues his adventures around the world!

Finny is now on Instagram! His account is @followfinny.

Sir Finnegan, known as “Finny” to his school of family and friends, is taking a trip to explore the diversity of intellectual property all around the world. If you see Finny on his journey, please take a picture of Finny and post it on social media with the hashtag #FollowFinny so we can track his progress. A plush toy of Finny is available to take home HERE.
 

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