Apple's application to register front view of iPhone 4 refused

In Apple Inc’s application to register device mark 236294 (March 19 2015), the Israel Patent and Trademark Office (IPTO), through Deputy Registrar Bracha, has refused to register a trademark consisting of a representation of the front view of the iPhone 4, including the home screen and a colourful icon display. The IPTO reasoned that the mark represented a product configuration and, as such, was subject to more stringent registration criteria. 

In 2011 Apple Inc applied for the registration in Israel of a device mark consisting of the front view of its iPhone 4 product in Class 9 of the Nice Classification, in respect of “handheld mobile digital electronic devices for use as a mobile phone, digital audio and video player, handheld computer, personal digital assistant, electronic organiser, electronic notepad, electronic calendar, electronic book reader, calculator and camera, for sending and receiving electronic mail and other digital data, and for accessing the Internet”. Apple claimed priority from Hong Kong application No 301711061, which dated from 2010.

Mark 236294

Following an IPTO office action, Apple also sought telle quelle registration based on US registration No 3,470,983. Following the examiner’s refusal of registration on the grounds that the mark was not intended to serve as a trademark and did not meet the criteria for registration of 3D trademarks representing product configurations, Apple was heard in a proceeding before the deputy registrar.

The deputy registrar refused registration, holding first that, while the propounded mark was two-dimensional (2D), in light of the Supreme Court decision in the Toffifee case (August Storck KG v Alpha Intuit Foodstuffs Ltd (CA 11487/03 [2008])), 2D marks that represent product configurations are subject to the same limitations as three-dimensional (3D) product shape marks.    

The deputy registrar proceeded to analyse whether the mark met the criteria of registrability for product shape marks, as enunciated in the Toffifee ruling - namely, whether:

• the shape serves as a trademark;
• it does not serve a substantial aesthetic or functional role; and
• the shape has acquired a secondary meaning.

The deputy registrar was prepared to apply the recent Circular Letter of the registrar (032/2015 of March 16 2015) on the registration of 3D product configuration marks, which made it possible to exempt a mark from compliance with the criteria for the registration of product shape marks if the mark contained additional elements permitting the identification of the source of the goods, such as the applicant’s house mark (in this respect, the Circular Letter was deemed to adopt an approach similar to that of Article 7 of the Community Trademark Regulation (207/2009) concerning product shape marks). However, because Apple’s mark contained no additional elements beyond the shape of the product, it could not benefit from a possibility of exemption.

Relying on the Supreme Court’s ruling in Toffifee regarding a “substantial” functional or aesthetic role and the decision in Stokke AS v Registrar of Patents (MCA 59175-12-12 (TA Distr)) interpreting “substantial” as “not negligible” rather than “dominant”, the deputy registrar held that the image of the product was not used as a trademark to identify origin and served substantial functional and aesthetic roles, not negated by evidence regarding the novelty of the product design and the availability of alternative designs.

For the sake of completeness, the deputy registrar proceeded to analyse secondary meaning, noting that, while the product was widely known, Apple had failed to provide sales data and evidence of advertising pertaining to Israel and had not adduced a consumer survey to support its claim that it uses the product image as a trademark and that the public has come to identify the image as such. She held that, even if the product was novel and not customary in its design at first, it was not distinguishable, on paper, from images of other manufacturers’ smartphones. Given Apple’s affiant testimony that the application “is for the design of Apple's distinctive iPhone telecommunications device featuring Apple's unique product configuration and colourful icon display”, Apple was held to admit that its product shape possessed significant functional and aesthetic aspects and to have failed to demonstrate a secondary meaning.

Finally, registration under the telle quelle provisions, according to Section 16 of the Trademarks Ordinance (New Version) 5732-1972, was refused because it was not shown that the image at issue was capable of serving as a trademark and because it was descriptive of the purpose and type of the goods.  

David Gilat and Sonia Shnyder, Gilat Bareket & Co, Reinhold Cohn Group, Tel Aviv