Apple fails to obtain protection for IPHONE mark

Switzerland

The Swiss Federal Administrative Court has upheld a decision of the Federal Institute of Intellectual Property (IGE) in which the latter had refused to register Apple Inc's IPHONE mark for a large number of goods in Class 9 of the Nice Classification, including digital mobile phones (Case B-6430/2008, November 24 2009).

The IGE, applying Article 2(a) of the Trademark Act, had considered that the mark was not inherently distinctive with regard to goods in Class 9. The IGE had nevertheless accepted to register the mark for other goods after reclassification of "computer games" from Class 9 to Class 28.

Before the court, Apple held that although the element 'phone' was clearly descriptive of the goods in question, the IPHONE mark consisted of an unusual combination of words and had no distinct meaning. The element 'i' could be seen as the abbreviation of a considerable number of words (eg, information, internet, information technology and Italy), or as the pronoun 'I' or the roman numeral I. Apple also pointed out that the IPHONE mark had been registered in a number of countries, and had been accepted as a Community trademark by the Office for Harmonization in the Internal Market.

Importantly, Apple chose not to rely on the ground of acquired distinctiveness through use.

With regard to inherent distinctiveness, the court held that the average consumer of telephones and related goods could easily, without using his or her imagination, recognize the element 'i' in the IPHONE mark as indicating 'internet' or 'information'. Therefore, according to the court, IPHONE would be understood as indicating a telephone with internet-related features or other characteristics of communication technology.

The court placed particular weight on the fact that telecommunications and information technology are now converging. For that reason, an 'iPhone' can be understood as a telephone with state of the art information technology. Therefore, the court concluded that the IPHONE mark was descriptive.

Apple also argued that the IGE had registered a number of similar marks beginning with 'i' (eg, IDOCUMENT, IPROJECT, IPUBLISH, IGUIDE and IFAST) or containing the word 'phone' (eg, OPHONE, STYLISH PHONE, VIRTUAL PHONE and CARPHONE) in Class 9. Moreover, Apple pointed out that it had successfully registered the IPHONE mark for computer hardware (at the time of registration in 2002, the IGE had held that computers were not seen as being directly linked to phones).

The court held that although the same authority must not reach different conclusions in identical cases, slight differences between the cases may alter the outcome. Moreover, an authority may change its views if such change is justified - especially where a decision is later proved to be wrong.

Peter Heinrich, Streichenberg Attorneys-at-Law, Zurich

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