CANCELLATION No 13 900 C (REVOCATION)

Swatch Ag (Swatch Sa) (Swatch Ltd), Jakob-Stämpfli-Str. 94, 2502 Biel/Bienne, Switzerland (applicant), represented by Despacho González-Bueno, S.L.P., Calle Velázquez 19, 2º Dcha., 28001 Madrid, Spain (professional representative)

a g a i n s t

Apple Inc., One Apple Park Way, Cupertino, California 95014, United States of America (EUTM proprietor), represented by Locke Lord (UK) LLP, 201 Bishopsgate, London, EC2M 3AB, United Kingdom (professional representative).

On 24/08/2018, the Cancellation Division takes the following

DECISION

1. The application for revocation is upheld.

2. The EUTM proprietor’s rights in respect of European Union trade mark  No 671 321  are revoked as from as from 14/10/2016 for all the contested goods, namely:

Class 9: Computers, computer terminals, keyboards, printers, display units, terminals; modems; disc drives; computer peripherals; communications equipment; facsimile machines, answering machines, telephone-based information retrieval systems; adapters, adapter cards, connectors and drivers; blank computer storage media, computer programs, operating systems, computer hardware, software and firmware; computer memory devices; data recordings; cameras; fonts, typefaces, type designs and symbols, all recorded electronically or embodied in computer software; chips, discs and tapes bearing or for recording computer programs and software; random access memory, read only memory; solid state memory apparatus; electronic communication equipment and instruments; telecommunications apparatus and instruments; computer and electronic games; related computer equipment for use therewith; multimedia products comprising or for use with any of the aforesaid goods; interactive products comprising or for use with any of the aforesaid goods; parts and fittings for all the aforesaid goods.

3. The European Union trade mark remains registered for all the uncontested goods, namely:

Class 16: Manuals sold with computer equipment.

4. The EUTM proprietor bears the costs, fixed at EUR 1 080.

PRELIMINARY REMARK

As from 01/10/2017, Regulation (EC) No 207/2009 and Regulation (EC) No 2868/95 have been repealed and replaced by Regulation (EU) 2017/1001 (codification), Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431, subject to certain transitional provisions. Further, as from 14/05/2018, Delegated Regulation (EU) 2017/1430 and Implementing Regulation (EU) 2017/1431 have been codified and repealed by Delegated Regulation (EU) 2018/625 and Implementing Regulation (EU) 2018/626. All the references in this decision to the EUTMR, EUTMDR and EUTMIR shall be understood as references to the Regulations currently in force, except where expressly indicated otherwise.

REASONS

The applicant filed a request for revocation of European Union trade mark registration No 671 321 ‘THINK DIFFERENT’ (word mark) (the EUTM). The request is directed against some of the goods covered by the EUTM, namely:

Class 9: Computers, computer terminals, keyboards, printers, display units, terminals; modems; disc drives; computer peripherals; communications equipment; facsimile machines, answering machines, telephone-based information retrieval systems; adapters, adapter cards, connectors and drivers; blank computer storage media, computer programs, operating systems, computer hardware, software and firmware; computer memory devices; data recordings; cameras; fonts, typefaces, type designs and symbols, all recorded electronically or embodied in computer software; chips, discs and tapes bearing or for recording computer programs and software; random access memory, read only memory; solid state memory apparatus; electronic communication equipment and instruments; telecommunications apparatus and instruments; computer and electronic games; related computer equipment for use therewith; multimedia products comprising or for use with any of the aforesaid goods; interactive products comprising or for use with any of the aforesaid goods; parts and fittings for all the aforesaid goods.

The applicant invoked Article 58(1)(a) EUTMR.

SUMMARY OF THE PARTIES’ ARGUMENTS

The applicant argues that the contested mark has not been put into genuine use for all the goods in Classes 9.

The EUTM proprietor filed evidence of use. It argues that the slogan ‘THINK DIFFERENT’ is intentionally grammatically incorrect (the adjective being used instead of the adverb ‘DIFFERENTLY’). The proprietor argues that the result is that the slogan is memorable to consumers. It notes that the slogan is used in conjunction with iMac computer products, which have been manufactured and sold in each Member State of the European Union since 1998. The contested trade mark has been used on product packaging since 2009 along with additional elements such as the Apple logo or the word mark ‘MACINTOSH’, which do not alter the distinctive character of the trade mark.

The applicant responds that, after having analysed the documentation filed by the EUTM proprietor, it considers these documents insufficient: the only documents that are dated within the relevant period are documents that refer solely and exclusively to an event that took place much earlier, that is, an advertising campaign launched by Apple Inc. in 1997 (documents 2, 3, 5 and 9). The applicant considers that the press articles submitted by the EUTM proprietor (documents 1, 2, 3, 4, 5, 6, 9, 10 and 11) and documents 7 and 8 refer to the creation and promotion of the abovementioned campaign, the scope and impact of which in the EU has not been proven. With regard to the witness statement (document 0), the applicant adds that it has hardly any value, since it was issued by Apple Inc. and so it cannot be given the same importance as if it had been issued by a third party. The applicant further notes that the witness statement and the annual reports (document 12) do not refer to the use of the slogan ‘THINK DIFFERENT’ in relation to any of the goods in question. The applicant notes that, in reality, it is the trade marks ‘MACINTOSH’ and ‘Mac’ that identify the goods, and the expression ‘THINK DIFFERENT’ is being used merely as a slogan that sometimes accompanies these goods but that does not serve to identify them. ‘THINK DIFFERENT’ is merely a decorative feature and does not identify and distinguish the proprietor’s goods; therefore it does not function as a trade mark. Finally, the applicant mentions that, in two opposition proceedings against international registration No 1 280 843 ‘Tick different’ and international registration No 1 279 757 ‘Tick different’ before the Trademark Office of the Czech Republic, it was considered that the proof submitted made reference to a mere slogan and that this proof therefore did not prove that the mark was in use in the EU; it provided even less proof that the mark enjoyed a reputation.

In support of its observations, the applicant filed the following evidence:

Annexes 1.1. and 1.2: two opposition proceedings against international registration No 1 280 843 designating the Czech Republic and the European Union ‘Tick different’ and international registration No 1 279 757 designating the Czech Republic ‘Tick different’ before the IP Office of the Czech Republic, which were partially translated into English.

Annex 1.3: decision of the Swiss IP Office, dated 30/06/2016, in opposition proceedings No 14 687’.

In its rejoinder, the EUTM proprietor admits that it does not dispute that it conducted an image campaign for its computer products in Class 9 under the trade mark ‘THINK DIFFERENT’ before the relevant period; in said campaign, the proprietor took advantage of popular personalities such as John Lennon and Albert Einstein. The EUTM proprietor adds that this campaign promoted the trade mark ‘APPLE’, which, as sustained by the commercial message, provided solutions beyond those available in the mainstream, and the campaign went on to influence the perception of consumers during the relevant period. In addition, the EUTM proprietor argues, when consumers already have an awareness of the mark, the amount of use required to sustain a market for those products will be lower. Therefore, the data provided outlining the sales of iMac computers under the trade mark should be more than sufficient to substantiate genuine use of the mark. The applicant’s criticism of the probative value of the witness statement is unfounded, as the information provided in this witness statement is not available from other sources; in addition, the articles and advertising materials accompanying the statement are independently verifiable. As regards the nature of use, the EUTM proprietor mentions that the contested trade mark has appeared on the packaging of every iMac computer sold since 2009. It is quite common for goods and services to bear more than one mark, validly used at the same time. According to the EUTM proprietor, the trade mark has a reputation within the European Union. The picture of the mark on the packaging is undated but it shows how the mark is used and must be considered with the affidavit, as together they show that the mark has been used as shown since 2009 for iMac computers. As regards the extent of use, it is not necessary to prove that the trade mark has been used for a continuous and uninterrupted period of five years. Previous decisions taken at the national level in the Czech Republic and Switzerland are not relevant, binding or persuasive. They focused on the reputation and well-known character of the mark, which are aspects different from genuine use.

The applicant filed a final submission, which was sent to the EUTM proprietor for information only, as it was submitted more than nine months after the deadline given to the applicant to file its final observations (09/06/2017).

GROUNDS FOR THE DECISION

According to Article 58(1)(a) EUTMR, the rights of the proprietor of the European Union trade mark will be revoked on application to the Office, if, within a continuous period of five years, the trade mark has not been put to genuine use in the Union for the goods or services for which it is registered, and there are no proper reasons for non-use.

Genuine use of a trade mark exists where the mark is used in accordance with its essential function, which is to guarantee the identity of the origin of the goods or services for which it is registered, in order to create or preserve an outlet for those goods or services. Genuine use requires actual use on the market of the registered goods and services and does not include token use for the sole purpose of preserving the rights conferred by the mark, nor use which is solely internal (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, in particular § 35-37 and 43).

When assessing whether use of the trade mark is genuine, regard must be had to all the facts and circumstances relevant to establishing whether commercial exploitation of the mark is real, particularly whether such use is viewed as warranted in the economic sector concerned to maintain or create a market share for the goods or services protected by the mark (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 38). However, the purpose of the provision requiring that the earlier mark must have been genuinely used ‘is not to assess commercial success or to review the economic strategy of an undertaking, nor is it intended to restrict trade-mark protection to the case where large-scale commercial use has been made of the marks’ (08/07/2004, T‑203/02, Vitafruit, EU:T:2004:225, § 38).

According to Article 19(1) EUTMDR in conjunction with Article 10(3) EUTMDR, the indications and evidence of use must establish the place, time, extent and nature of use of the contested trade mark for the goods and/or services for which it is registered.

In revocation proceedings based on the grounds of non-use, the burden of proof lies with the EUTM proprietor as the applicant cannot be expected to prove a negative fact, namely that the mark has not been used during a continuous period of five years. Therefore, it is the EUTM proprietor who must prove genuine use within the European Union, or submit proper reasons for non‑use.

In the present case, the EUTM was registered on 06/09/1999. The revocation request was filed on 14/10/2016. Therefore, the EUTM had been registered for more than five years at the date of the filing of the request. The EUTM proprietor had to prove genuine use of the contested EUTM during the five-year period preceding the date of the revocation request, that is, from 14/10/2011 to 13/10/2016 inclusive, for the abovementioned contested goods in Class 9.

On 24/03/2017, the EUTM proprietor submitted evidence as proof of use.

The evidence to be taken into account is the following:

• Witness statement of Thomas La Perle, Director in Apple’s legal department, dated 23/03/2017. It contains undated images showing the proprietor’s use of the contested registration in relation to computers and sales figures for computers during the relevant period worldwide. It also contains an undated picture of use of ‘Think different’ on the packaging of a Macintosh computer.

• Exhibit TLP 1: press article published on MacRumors on 01/04/2016 regarding the timeline of Apple’s history.

• Exhibit TLP 2: press articles published in Forbes and The Telegraph on 21/08/2012 and 20/08/2012 about Apple’s capitalisation.

• Exhibit TLP 3: press article published in Forbes on 19/02/2015 providing background information about the EUTM proprietor.

• Exhibit TLP 4: press article published in the Wall Street Journal on 14/04/1998 providing background information about the slogan ‘THINK DIFFERENT’.

• Exhibit TLP 5: press article published in Forbes on 14/12/2011 providing background information about the slogan ‘THINK DIFFERENT’.

• Exhibit TLP 6: article published on Ad Age (Advertising Age) on 21/09/1998 providing background information about the slogan ‘THINK DIFFERENT’.

• Exhibit TLP 7: image of a ‘THINK DIFFERENT’ book, dated 1998, providing background information about the slogan ‘THINK DIFFERENT’.

• Exhibit TLP 8: extract from the Effie website, dated 1998, providing background information about the trade mark ‘THINK DIFFERENT’ and its use. Apple’s ‘THINK DIFFERENT’ commercial won the 1998 Primetime Emmy award for ‘outstanding commercial’ and Apple’s ‘Think Different’ campaign won the Grand Effie award in 2000.

• Exhibit TLP 9: various press articles referring to the use of the trade mark ‘THINK DIFFERENT’ since its creation.

• Exhibit TLP 10: various press articles dated 2016.

• Exhibit TLP 11: press article published on MacRumors on 08/03/2016.

• Exhibit TLP 12: Apple’s ‘Form 10-K’ annual reports from 2009 to 2015 not mentioning the contested trade mark.

Evidence

• Witness statement

As far as the witness statement is concerned, Article 10(4) EUTMDR (applicable to cancellation proceedings by virtue of Article 19(2) EUTMDR) expressly mentions written statements referred to in Article 97(1)(f) EUTMR as admissible means of proof of use. Article 97(1)(f) EUTMR lists, as means of giving evidence, sworn or affirmed written statements or other statements that have a similar effect under the law of the State in which they were drawn up. As far as the probative value of this kind of evidence is concerned, statements drawn up by the interested parties themselves or their employees are generally given less weight than independent evidence. This is because the perceptions of a party involved in a dispute may be more or less affected by its personal interests in the matter.

However, this does not mean that such statements do not have any probative value at all.

The final outcome depends on the overall assessment of the evidence in the particular case. The probative value of such statements depends on whether or not they are supported by other types of evidence (labels, packaging etc.) or evidence originating from independent sources.

In view of the foregoing, the remaining evidence must be assessed in order to see whether or not the contents of the declaration are supported by the other items of evidence.

Assessment of genuine use — factors

The requirements for proof of use, namely the place, time, extent and nature of use, are cumulative (05/10/2010, T‑92/09, ‘STRATEGI’, EU:T:2010:424, § 43). Therefore, the EUTM proprietor is obliged to prove each of these requirements.

The Cancellation Division will first focus the present decision on the criterion of extent of use since, in its opinion, the evidence provided by the EUTM proprietor is insufficient to prove that this requirement has been met for the EUTM.

Extent of use

Concerning extent of use, it is settled case-law that account must be taken, in particular, of the commercial volume of the overall use, as well as of the length of the period during which the mark was used and the frequency of use (e.g. 08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 35).

The Court has held that ‘[u]se of the mark need not … always be quantitatively significant for it to be deemed genuine, as that depends on the characteristics of the goods or service concerned on the corresponding market’ (11/03/2003, C‑40/01, Minimax, EU:C:2003:145, § 39).

The assessment of genuine use entails a degree of interdependence between the factors taken into account. Thus, the fact that commercial volume achieved under the mark was not high may be offset by the fact that use of the mark was extensive or very regular, and vice versa. Likewise, the territorial scope of the use is only one of several factors to be taken into account, so that a limited territorial scope of use can be counteracted by a more significant volume or duration of use.

The evidence cannot be assessed in absolute terms but must be assessed in relation to other relevant factors. In this respect, the evidence should be viewed in relation to the nature of the goods and the structure of the relevant market (30/04/2008, T‑131/06, Sonia Sonia Rykiel, EU:T:2008:135, § 53).

In the present case, the evidence does not demonstrate that the EUTM has been used sufficiently and constantly within the relevant period in the EU territory.

The Cancellation Division does not agree with the statement of the EUTM proprietor according to which ‘‘the evidence submitted speaks for itself”. On the contrary, the evidence creates doubts as to the fact that the contested trade mark had been genuinely used.

According to the affidavit, the number of computers sold under the trade marks ‘IMac’ and ‘Macintosh’ is huge worldwide. Nevertheless, the affidavit refers to the total annual sales of Apple’s MAC/Macintosh computers worldwide, but provides no specific figures for the European Union. The annual global advertising expenditures are given without mention of the trade marks used in the campaigns. The Annual net figures in ‘Europe’ do not mention the relevant products and countries and are not supported by additional evidence. There is not a single dated document showing use of the contested trade mark on the packaging of computers sold within the European Union. In the affidavit, it is also mentioned that the EUTM proprietor sold iMac computers in the United Kingdom, Finland, Denmark and Germany featuring the THINK DIFFERENT mark on the box packaging but this is not supported by additional evidence except an undated picture. Contrarily to what argued by the EUTM proprietor, there are obviously many sources likely to support the probative value of the witness statement that he could have used.

For sake of thoroughness, the Cancellation Division further observes that the evidence provided outside the relevant period is not sufficient to support use within the relevant period in the present case. Contrarily to what is mentioned by the EUTM proprietor, when consumers already have an awareness of the mark, the amount of use required to sustain a market for those products is not different and in any event, the evidence should support use within the relevant period. The data provided outlining the sales of iMac computers under the trade mark within this period are missing.

Time of use

The evidence must show genuine use of the European Union trade mark within the relevant period, namely from 14/10/2011 to 13/10/2016 inclusive.

Evidence referring to use outside the relevant period is disregarded unless it contains conclusive indirect proof that the mark must have been genuinely used during the relevant period as well. Events subsequent to the relevant period may make it possible to confirm or assess more accurately the extent to which the earlier mark was used during the relevant period and the EUTM proprietor’s real intentions at that time (27/01/2004, C‑259/02, Laboratoire de la mer, EU:C:2004:50). The same should apply to evidence related to events prior to the relevant period.

In the present case, the evidence referring to use much before the relevant period does not confirm use of the EUTM proprietor’s mark within the relevant period because the extent of use during the relevant period is not proven. This is because the contested trade mark is a slogan that was created a long time before the relevant period and was intensively used in commercials, to the point of it becoming iconic, as demonstrated by the independent evidence. It is undisputed that ‘THINK DIFFERENT’ is an advertising slogan of Apple, Inc., created in 1997 by an advertising agency. This is also supported by Exhibits TLP 4 to 8.

Nevertheless, this slogan is no longer used in advertising. There is some evidence of sporadic use of the slogan within the relevant period on the EUTM proprietor’s website, where it was used with the Apple logo four times during the relevant period:

• In 2013, when Nelson Mandela died.

• On 24/01/2014, when Macintosh turned 30 years old.

• In 2014, when Robin Williams died.

• In 2016, when Muhammad Ali died.

In the affidavit, it is mentioned that the trade mark has been used since 2009 on the packaging of iMac computers as ‘Macintosh’ ‘Think Different’ (in rather small characters). Nevertheless, this is not supported by additional evidence. The EUTM proprietor sells its computers all around the word, including within the European Union, as mentioned in the affidavit. Even if some press articles show that iMac computers were marketed by the EUTM proprietor before, during and after the relevant period, in no manner they show that the contested trade mark was used during the relevant period.

Therefore, at least as regards extent and time of use, it is considered that there is not sufficient evidence of use of the contested trade mark during the relevant period. This conclusion would only be possible making suppositions and extrapolations that are not supported by solid evidence.

Overall assessment

In order to examine, in a given case, whether use of the earlier mark is genuine, an overall assessment must be made taking account of all the relevant factors in the particular case. That assessment implies certain interdependence between the factors taken into account. Thus, a low volume of goods marketed under that trade mark may be compensated for by high intensity of use or a certain constancy regarding the time of use of that trade mark or vice versa (08/07/2004, T‑334/01, Hipoviton, EU:T:2004:223, § 36).

In the present case, the Cancellation Division considers that genuine use of the contested mark has not been sufficiently demonstrated for the relevant factors: time and extent of use of the mark. Although considering that, in the past, the slogan was widely used in commercials and has become iconic, the evidence of use within the relevant period is not sufficient.

Genuine use of a trade mark cannot be proved by means of probabilities or suppositions, but must be demonstrated by solid and objective evidence of effective and sufficient use of the trade mark on the market concerned (18/01/2011, T-382/08, Vogue, EU:T:2011:9, § 22).

While the Office does not necessarily require a high threshold of proof of genuine use, the evidence filed in the present case is insufficient and does not demonstrate that the proprietor has seriously tried to maintain a commercial position in the relevant market.

Consequently, for all the above reasons, the Cancellation Division considers that the EUTM proprietor has not provided sufficient indications concerning the extent and time of the use of the contested mark in relation to any of the contested goods.

Conclusion

It follows from the above that the EUTM proprietor has not proven genuine use of the EUTM for any of the contested goods. As a result, the application for revocation is wholly successful and the EUTM must be revoked for all the contested goods, namely:

Class 9: Computers, computer terminals, keyboards, printers, display units, terminals; modems; disc drives; computer peripherals; communications equipment; facsimile machines, answering machines, telephone-based information retrieval systems; adapters, adapter cards, connectors and drivers; blank computer storage media, computer programs, operating systems, computer hardware, software and firmware; computer memory devices; data recordings; cameras; fonts, typefaces, type designs and symbols, all recorded electronically or embodied in computer software; chips, discs and tapes bearing or for recording computer programs and software; random access memory, read only memory; solid state memory apparatus; electronic communication equipment and instruments; telecommunications apparatus and instruments; computer and electronic games; related computer equipment for use therewith; multimedia products comprising or for use with any of the aforesaid goods; interactive products comprising or for use with any of the aforesaid goods; parts and fittings for all the aforesaid goods.

The EUTM remains on the register for all the uncontested goods in Class 16.

According to Article 62(1) EUTMR, the revocation will take effect from the date of the application for revocation, that is, as of 14/10/2016.

COSTS

According to Article 109(1) EUTMR, the losing party in cancellation proceedings must bear the fees and costs incurred by the other party.

Since the EUTM proprietor is the losing party, it must bear the cancellation fee as well as the costs incurred by the applicant in the course of these proceedings.

According to Article 109(1) and (7) EUTMR and Article 18(1)(c)(ii) EUTMIR, the costs to be paid to the applicant are the cancellation fee and the representation costs, which are to be fixed on the basis of the maximum rate set therein.

The Cancellation Division

Pierluigi M. VILLANI	Jessica LEWIS	Michaela SIMANDLOVA

According to Article 67 EUTMR, any party adversely affected by this decision has a right to appeal against this decision. According to Article 68 EUTMR, notice of appeal must be filed in writing at the Office within two months of the date of notification of this decision. It must be filed in the language of the proceedings in which the decision subject to appeal was taken. Furthermore, a written statement of the grounds of appeal must be filed within four months of the same date. The notice of appeal will be deemed to be filed only when the appeal fee of EUR 720 has been paid.