CANCELLATION No 45 037 C (INVALIDITY)

Apple Inc., One Apple Park Way, 95014 Cupertino, United States (applicant), represented by Locke Lord LLP, Marsveldplein 5, 1050 Brussels, Belgium (professional representative)

a g a i n s t

Shenzhen Qiyi Innovation Technology Co., Ltd, Rm 401-08, 4/F, Zhongzhi Nexone, Sanlian Community, Longhua St., 518000 Longhua Dist., Shenzhen, People’s Republic of China (EUTM proprietor), represented by Isabelle Bertaux, 55 rue Ramey, 75018 Paris, France (professional representative).

On 22/02/2021, the Cancellation Division takes the following

DECISION

1. The application for a declaration of invalidity is upheld.

2. European Union trade mark No 18 159 116 is declared invalid in its entirety.

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

REASONS

The applicant filed an application for a declaration of invalidity against all the goods of European Union trade mark No 18 159 116 based on, inter alia, European Union trade mark registration No 11 871 225 ‘MAC’. The applicant invoked Article 60(1)(a) EUTMR in conjunction with Article 8(1)(b) EUTMR and Article 8(5) EUTMR for this mark, and Article 60(1)(c) EUTMR in conjunction with Article 8(4) EUTMR regarding non-registered marks used in the course of trade in all the Member States of the European Union. The applicant also claims that its ‘MAC’ marks are well-known marks within the meaning of Article 6bis of the Paris Convention.

SUMMARY OF THE PARTIES’ ARGUMENTS

The arguments and evidence provided by the applicant will be listed and evaluated in the corresponding sections below.

The EUTM proprietor did not submit any arguments even though the Office invited it to do so and set a date to this effect.

REPUTATION — ARTICLE 60(1)(a) EUTMR IN CONJUNCTION WITH ARTICLE 8(5) EUTMR

The invalidity action is based on several earlier trade marks for which reputation has been claimed, and the assessment of this aspect will be first carried out in relation to the earlier mark reflected above.

According to Article 60(1)(a) EUTMR, a European Union trade mark will be declared invalid on application to the Office where there is an earlier mark, as referred to in Article 8(2) EUTMR, and the conditions set out in Article 8(1) or (5) EUTMR are fulfilled.

According to Article 8(5) EUTMR, upon opposition by the proprietor of an earlier registered trade mark within the meaning of Article 8(2) EUTMR, the contested trade mark will not be registered where it is identical with, or similar to, an earlier trade mark, irrespective of whether the goods or services for which registration is sought are identical with, similar to or not similar to those for which the earlier trade mark is registered, where, in the case of an earlier European Union trade mark, the trade mark has a reputation in the Union or, in the case of an earlier national trade mark, the trade mark has a reputation in the Member State concerned and where use without due cause of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trade mark.

Therefore, the grounds of refusal of Article 8(5) EUTMR are applicable in the context of invalidity proceedings only when the following conditions are met.

 The signs must be either identical or similar.

 The earlier trade mark must have a reputation. The reputation must be prior to the filing of the contested trade mark and must still exist at the time of filing of the invalidity request; it must exist in the territory concerned and for the goods and/or services on which the application for a declaration of invalidity is based.

 Encroachment upon reputation: the use of the contested trade mark would take unfair advantage of, or be detrimental to, the distinctive character or repute of the earlier trade mark.

The abovementioned requirements are cumulative and, therefore, the absence of any one of them will lead to the rejection of the application for declaration of invalidity under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR (16/12/2010, T‑345/08 & T‑357/08, Botolist / Botocyl, EU:T:2010:529, § 41).

In the present case, the EUTM proprietor did not file observations and, consequently, it did not claim to have due cause for using the contested mark. Therefore, in the absence of any indications to the contrary, it must be assumed that no due cause exists.

a) Reputation of the earlier trade mark

Reputation implies a knowledge threshold that is reached only when the earlier mark is known by a significant part of the relevant public for the goods or services it covers. The relevant public is, depending on the goods or services marketed, either the public at large or a more specialised public.

In invalidity proceedings, an invalidity applicant relying on reputation must prove that its earlier right has acquired reputation by the filing date of the contested EUTM, taking account, where appropriate, of any priority claimed (Article 60(1) EUTMR, second subparagraph).

In addition, the reputation of the earlier mark must still exist at the time when the decision on the invalidity request is taken, given that the conditions set out in the first subparagraph of Article 60(1) EUTMR are formulated in the present tense. Therefore, the applicant should also prove the reputation of the earlier mark at the time of filing of the invalidity request, in which case, and unless there is proof to the contrary, the Cancellation Division will assume that it continues to exist at the time when the decision on invalidity is taken.

The contested trade mark was filed on 29/11/2019. Therefore, the applicant was required to prove that the trade mark on which the application is based had acquired a reputation in the European Union prior to that date and that it continued to exist at the time of filing of the invalidity request, that is, on 29/07/2020. The evidence must also prove that the reputation was acquired for the goods for which the applicant has claimed reputation, namely:

Class 9: Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission and/or reproduction of sound or images or other data; magnetic data carriers; recording discs; mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment; fire-extinguishing apparatus; apparatus, instruments and materials for transmitting and/or receiving and/or recording sound and/or images; downloadable audio and video recordings featuring music, comedy, drama, action, adventure and/or animation; computers, tablet computers, computer terminals, computer peripheral devices; computer hardware; computer networks; facsimile machines, answering machines, telephone-based information retrieval software and hardware; adapters, adapter cards, connectors and drivers; blank computer storage media; fonts, typefaces, type designs and symbols in the form of recorded data; 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; telecommunications equipment, apparatus and instruments; computer games; computer software and computer hardware apparatus with multimedia and interactive functions; computer gaming machines; microprocessors, memory boards, monitors, displays, keyboards, cables, modems, printers, videophones, disk drives; central processing units; circuit boards; integrated circuits; magnetic, optical, and electronic data storage materials and devices; computer memory devices; blank computer storage media; solid-state data storage devices; user manuals in electronically readable, machine readable or computer readable form for use with, and sold as a unit with, all the aforementioned goods; apparatus for data storage; hard drives; miniature hard disk drive storage units; pre-recorded vinyl records, audio tapes, audio-video tapes, audio video cassettes, audio video discs; audio tapes for sale with booklets; sound, video and data recordings; CD-ROMs; digital versatile discs; mouse pads; batteries; rechargeable batteries; chargers; chargers for electric batteries; headphones; stereo headphones; in-ear headphones; stereo speakers; audio speakers; audio speakers for home; monitor speakers; speakers for computers; personal stereo speaker apparatus; radio receivers, amplifiers, sound recording and reproducing apparatus, electric phonographs, record players, high fidelity stereo apparatus, tape recorders and reproducing apparatus, loudspeakers, multiple speaker units, microphones; digital audio and video players with multimedia and interactive functions; accessories, parts, fittings, and testing apparatus for all the aforementioned goods; digital audio and video devices; audio cassette recorders and players, video cassette recorders and players, compact disc players, digital versatile disc recorders and players, digital audio tape recorders and players; radios; audio, video, and digital mixers; radio transmitters; car audio apparatus; global positing systems; navigation apparatus for vehicles (on board computers); cameras; video cameras; bags and cases adapted or shaped to contain cameras and/or video cameras; telephones; cordless telephones; mobile telephones; parts and accessories for mobile telephones; mobile telephone covers; mobile telephone cases; mobile telephone cases made of leather or imitations of leather; mobile telephone covers made of cloth or textile materials; portable digital electronic devices for data processing, information processing, storing and displaying data, transmitting and receiving data, transmission of data between computers, and software related thereto; handheld digital electronic devices for data processing, information processing, storing and displaying data, transmitting and receiving data, transmission of data between computers, and software related thereto; digital music and/or video players; MP3 and other digital format audio players; hand held computers, personal digital assistants, electronic organizers, electronic notepads; handheld and mobile digital electronic devices for the sending and receiving of telephone calls, faxes, electronic mail, video, instant messaging, music, audiovisual and other multimedia works, and other digital data; global positioning system (GPS) devices, telephones; handheld and mobile digital electronic devices for the sending and receiving telephone calls, faxes, electronic mail, and other digital media; bags and cases adapted or shaped to contain digital music and/or video players, hand held computers, personal digital assistants, electronic organizers and electronic notepads; holders, straps, armbands, lanyards and clips for portable and handheld digital electronic devices for recording, organizing, transmitting, manipulating, and reviewing text, data, audio, image and video files; computer software; computer programs; pre-recorded computer programs for personal information management, database management software, character recognition software, telephony management software, electronic mail and messaging software, paging software, mobile telephone software; database synchronization software, computer programs for accessing, browsing and searching online databases, computer software for use in connection with online music subscription service, software that enables users to play and program music and entertainment-related audio, video, text and multi-media content, software featuring musical sound recordings, entertainment-related audio, video, text and multi-media content, computer software and firmware for operating system programs, data synchronization programs, and application development tool programs for personal and handheld computers; computer software for authoring, downloading, transmitting, receiving, editing, extracting, encoding, decoding, displaying, storing and organizing text, graphics, images, and electronic publications; downloadable electronic publications in the nature of books, plays, pamphlets, brochures, newsletters, journals, magazines, and periodicals on a wide range of topics of general interest; computer hardware and software for providing integrated telephone communication with computerised global information networks; electronic handheld devices for the wireless receipt, storage and/or transmission of data and messages, and electronic devices that enable the user to keep track of or manage personal information; software for the redirection of messages, Internet e-mail, and/or other data to one or more electronic handheld devices from a data store on or associated with a personal computer or a server; computer software for the synchronization of data between a remote station or device and a fixed or remote station or device; sound effect apparatus and instruments (computer software); electronic tone generators (computer software); computer desktop utility software; screen saver software; software for detecting, eradicating and preventing computer viruses; software for data encryption; software for analysing and recovering data; software for computer system backup, data processing, data storage, file management and database management; software for telecommunication and communication via local or global communications networks, including the Internet, intranets, extranets, television, mobile communication, cellular and satellite networks; software for creating and delivering electronic greeting cards, messages and electronic mail; software for web design, creation, publishing and hosting; software for access to communications networks including the Internet; instructional material relating to the foregoing; computer disk holders; computer equipment for use with all of the aforesaid goods; electronic apparatus with multimedia functions for use with all of the aforesaid goods; electronic apparatus with interactive functions for use with all of the aforesaid goods; accessories, parts, fittings, and testing apparatus for all of the aforesaid goods; covers, bags and cases adapted or shaped to contain all of the aforesaid goods, made of leather, imitations of leather, cloth, or textile materials.

The applicant submitted a witness statement, dated 27/07/2020, signed by the senior director of the applicant’s Legal Department, together with Annex A (a number of previous cases concerning ‘MAC’ marks) with 62 exhibits, and Annex B, documents relating to its claim under Article 8(4) EUTMR.

The witness statement provides an overview of the history of the applicant’s company and of the goods and services branded with the applicant’s marks. It explains that Apple sells its products worldwide through its retail stores, online stores, and direct sales force, as well as through third-party cellular network carriers, wholesalers, retailers, and value-added resellers. In addition, it says Apple promotes and sells a variety of third-party products that are compatible with Apple products, including MAC computers, such as application software and various accessories, through its retail and online stores. Moreover, it mentions Apple sells to individual consumers, small and mid-sized businesses and education, enterprise and government customers. It mentions that over the course of its more than 40 years of operation, Apple has earned a loyal customer base among consumers, third-party application developers, and commercial enterprises, including businesses advertising and selling their goods and services in connection with Apple’s online and brick-and-mortar retail stores. As a result, Apple’s goods and services have become some of the most recognised and highly sought after in the world. Apple’s longstanding commitment to bringing the best user experience to its consumers through its innovative goods and services has earned it a reputation as a pioneer in the field of technology.

The applicant submitted the following exhibits.

 Exhibit TLP-1: articles that appeared in Forbes.com and the Telegraph.

 Exhibit TLP-2: an article that appeared in the BBC.

 Exhibit TLP-3: an article that appeared in Fortune Magazine.

 Exhibit TLP-4: an article that appeared in The Guardian.

 Exhibit TLP-5: copies of Interbrand’s rankings that fluctuate from USD 15.4 billion in 2009 to USD 234.2 billion in 2019.

 Exhibit TLP-6: copies of the rankings made by the market research and brand valuation and management company Millward Brown Optimor from which it becomes apparent that the estimated value of the Apple brand ranked from No 29 in 2006 to No 2 in 2019. Other rankings have been published by Forbes’ World’s Most Valuable Brands.

 Exhibit TLP-7: surveys for 2012-2019.

 Exhibit TLP-8: copies of Fortune magazine’s ‘Most Admired Company’ for 2006-2020 (in 2020 Apple continued to hold the top ranking for the 13th year in a row).

 Exhibit TLP-9: a copy of the 2009-2017 Cool Brands rankings.

 Exhibit TLP-10: an extract from the CoolBrands’ website relating to ‘Apple’s range of iconic must-have products around the world’.

 Exhibit TLP-11: a press release regarding the fact that Apple was ranked first in the list of brands that Europeans felt most passionately about, in a survey conducted among 10 000 Europeans by the online research agency Panelteam.

 Exhibit TLP-12: copies of printouts from the website Ranking the Brands, where Eurobrand, a European independent brand and patent valuation expert, ranked Apple as the number one most valuable global brand for 2011-2019.

 Exhibit TLP-13: a printout of the Harris Interactive reports, which granted Apple the Brand of the Year award for smart phones in 2018 and for smartphones, tabletop computers, virtual personal assistant and wearable tech in 2019.

 Exhibit TLP-14: a selection of articles by third parties, showing their admiration for the Apple brand, referring to Apple’s range of products. The witness statement affirms that Apple has vigorously sought protection for its rights in the MAC trade marks.

 Exhibit TLP-15: a copy of a trade mark status report, showing details of a representative sample of some of Apple’s trade mark registrations for its family of MAC trade marks worldwide.

 Exhibit TLP-16: a policy governing the use of Apple’s trade marks (including the MAC trade marks) by third parties. The witness statement also provides information regarding the Mac Brand’s landmarks.

 Exhibit TLP-17: promotional material and articles from third parties.

In relation to MAC computer products the witness statement explains the following:

Apple first started using MAC as a ‘nickname’ trade mark for its Macintosh branded computer products when they were introduced in 1984. Although the ‘MAC’ trade mark itself did not appear on Apple’s product packaging at that time, it frequently appeared in promotional and advertising material and in third-party articles. For example, an article of 26/03/1984 from InfoWorld.

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 Exhibit TLP-18: copies of brochures promoting Apple’s computers in various languages, targeting consumers in various countries around the world, including some in the European Union. Some of the computers seen are the ‘Power Mac G4’. The witness statement makes a very thorough description of the updates in the MAC range of computers.

 Exhibits TLP-19 and TLP-20: copies of Apple’s press releases in relation to this issue.

 Exhibit TLP-21: copies of Apple’s press releases in relation to all the updates of the MacBook Pro. The witness statement explains that Apple promotes every product launch through its country-specific websites and elsewhere.

 Exhibit TLP-22: contains, inter alia, screenshots of Apple’s various country-specific websites obtained on a number of dates between 2004 and 2014.

 Exhibit TLP-23: a selection of press releases found on Apple’s website announcing the releases of new and updated MAC computer products between 2005 and 2020.

 Exhibit TLP-24: screenshots of the Apple Store website ‘Shop Mac’ pages for each of the following countries: Austria, Belgium, Denmark, Finland, France, Germany, Ireland, Italy, Luxembourg, the Netherlands, Portugal, Spain, Sweden, the United Kingdom and the United States. These screenshots were obtained on 04/02/2009 and demonstrate the use of many of the ‘MAC’ trade marks in connection with many of Apple’s goods. Apple has officially labelled the operating system installed in its Macintosh computers as the ‘Mac OS’, ‘Mac OS X’, or ‘macOS’ computer operating system (collectively ‘macOS’) since 1997.

 Exhibit TLP-25: a collection of materials, showing use of the ‘MAC’ trade marks in connection with Apple’s ‘macOS’ products, distributed in a number of countries since 1997.

 Exhibit TLP-26: articles in relation to the millions of users of the ‘macOS’ operating system internationally, including throughout the European Union, in addition to an approximately equal number of users using an earlier version of the ‘macOS’ operating system.

 Exhibit TLP-27: printouts from the special website for worldwide developers run by Apple at http://developer.apple.com in relation to the development of innovative applications for the ‘macOS’ and the operating system on its iPod touch, iPad, and iPhone devices known as ‘iOS’; extensions for Apple’s Safari web browser, and accessories for MAC, iPod, iPad and iPhone computers and devices. The witness statement explains the use of the MAC Services.

 Exhibit TLP-28: press releases in relation to figures of purchases.

 Exhibit TLP-29: a copy of the packaging for ‘Cool Fun for Kids’ software.

 Exhibit TLP-30: copies of press releases and brochures discussing and advertising the ‘macOS’ Logo compatibility program. The witness statement adds that Apple now licenses authorised third-party software and hardware developers to use the following Mac Logo to indicate compatibility with the ‘macOS’ operating system.

 Exhibit TLP-31: contains a sampling of 300 third-party developers located in some European countries.

 Exhibit TLP-32: copies of the ‘Macintosh Products Guide’ page obtained from Apple’s website; the exhibit includes pages in English, French and German, each prominently referencing the ‘MAC’ trade mark. These pages indicate that the ‘Macintosh Products Guide’ provides a ‘catalogue of over 23,000 products made for Mac’ – that is to say – products made for use with MAC computers, many of which were manufactured by third parties under Apple’s compatibility licensing programs.

The witness statement mentions that throughout most of its years of operation, Apple chose to produce the MAC computer hardware itself, but from 1994 to 1997, it operated a worldwide MAC licensing program for the Licensing of Third-Party Manufacturing of Mac Computers, which allowed third party manufacturers to produce and sell Mac computer ‘clones’ running the Mac Operating System.

 Exhibit TLP-33: copies of a number of articles and excerpts discussing the Mac licensing program, taken from various print publications with worldwide circulation. the witness statement lists Apple Retail Activities, Apple Store Online and Apple Store Retail Locations in relation to the Use and Promotion of the Mac trade marks in the EU and worldwide.

 Exhibit TLP-34: contains a web page (https://www.apple.com/choose-country-region/) that allows users to access country-specific websites.

 Exhibit TLP-35: a selection of printouts, downloaded from the archived versions of Apple’s country-specific Apple Store websites on various dates from 2009 to 2014.

 Exhibit TLP-36: printouts, showing the traffic rank and the visitors by country of the Apple website provided by Alexa.

 Exhibit TLP-37: information relating to a record-breaking number of App Store purchases during Christmas 2017 and New Year’s Day 2018, culminating in sales of more than USD 1 billion in little over a week.

 Exhibit TLP-38: a selection of articles, discussing various shop openings throughout the European Union.

 Exhibit TLP-39: a press release from Apple relating to educational sessions the following month in all Apple stores ranging in topics from photo and video to music, coding, art and design, and more. The witness statement contains a table with annual sales figures from 2010 to 2014.

 Exhibit TLP-40: extracts from Apple’s various 10-K forms for the relevant annual periods.

 Exhibit TLP-41: a collection of images illustrating the use of the Apple Marks in connection with the Apple Store retail locations in the European Union and worldwide.

the witness statement mentions that Apple’s MAC line of computers have consistently earned rave reviews from technology critics, demonstrating Media Recognition of Apple’s Mac Branded Products and Services.

 Exhibit TLP-42: copies of a number of reviews relating to Apple’s MAC computers, including Business Week and Computerworld magazine articles obtained from the internet websites www.businessweek.com and www.computerworld.com.

 Exhibit TLP-43: some examples of coverage taken from publications such as Vanity Fair, GQ Magazine, Elle Decoration and Digital Photo as well as the results of a press search for articles published in the European Union concerning ‘MAC’ branded computers.

the witness statement explains that, since the introduction of Macintosh computers in 1984, Apple has strongly emphasised the promotion of its ‘MAC’ trade marks in connection with its goods and services worldwide. Apple’s extensive promotional efforts have contributed towards Apple’s success in achieving impressive sustained sales growth of 29 % per year since 2001. In recent times, Apple’s growth has exceeded that figure considerably. For example, Apple sales increased 45 % from 2011 to 2012. Apple’s Advertising and Brand-Building Initiatives have produced a total advertising expenditure of almost USD 8 billion since 1994.

The witness statement mentions that the television advertising of the MAC line of personal computers was introduced through Apple’s landmark television commercial entitled ‘1984’, which aired on 22/01/1984, during the broadcast of Super Bowl XVIII, the American NFL championship game.

 Exhibit TLP-44: a copy of an article entitled ‘1984 Revisited’ authored by Verne Gay. On the networks in the European Union, commercials depicting some or all of the MAC trade marks in connection with Apple’s goods and services have been shown on Channel 4, Channel Five, SC4, E4, UK Gold, Bravo, MTV, Paramount, Sci Fi, ITV2 and all BSkyB channels (in the United Kingdom), FTV, Canal+, TF6, M6 Music, Paris Premiere, MCM, Ab1, Canal Jimmy, iTV, MTV and Comedie (in France), ARD, Pro7, SAT.1, RTL. Kabel 1. Vox, N24, N-TV and DSF (in Germany).

 Exhibit TLP-45: contains: (a) screenshots obtained from the Effie website at www.effie.org, providing details of the 2000, 2003 and 2007 awards; (b) screenshots obtained from the Effie website, providing background information on the Effie awards; and (c) a screenshot obtained from the Primetime Emmy awards website, showing the award won by the ‘Think Different’ commercial.

The witness statement explains, in relation to printed advertising, that Apple has, over the years, obtained significant exposure for its ‘MAC’ goods and services through computer industry publications, as well as general interest publications.

 Exhibit TLP-46: copies of certain MACWORLD computer industry publications distributed in the US, the European Union and internationally, as well as copies of advertisements in Time magazine, which describe and promote ‘MAC’ goods and services.

 Exhibit TLP-47: samples of printed Apple advertisements, displaying the ‘MAC’ trade marks in publications in France, Germany and the United Kingdom during 2005-2006.

 Exhibit TLP-48: a number of examples of Apple’s printed advertising distributed in the European Union, including Austria, Denmark, Finland, France, Germany, Ireland, Italy, the Netherlands, Spain, Sweden and the United Kingdom.

The witness statement refers to other promotional initiatives such as outdoor advertisements for its goods and services, many of which depict ‘MAC’ trade marks, including billboards, bus advertisements and bus shelter advertisements, as well as radio advertisements, in major markets throughout the US, the European Union and worldwide.

 Exhibit TLP-49: samples of outdoor advertisements depicting the ‘MAC’ trade marks in various countries of the European Union during 2001-2007.

 Exhibit TLP-50: copies of promotional materials, produced with the permission of Apple for distribution in, France, Germany and the United Kingdom.

 Exhibit TLP-51: copies of articles from British, French, German, Italian, Spanish and Swedish newspapers and online magazines, dated between 2005 and 2009, referring to the annual Apple Worldwide Developers Conference. The witness statement notes that Apple maintains a website at the domain name www.apple.com and other related websites targeting various national audiences via internet advertising on a number of country-specific websites. With the exception of Cyprus, Apple owns and operates national websites for every Member State in the European Union, which are translated into the native language of the respective territory.

 Exhibit TLP-52: (which the party requested be kept confidential) a table illustrating the total number of unique visitors who have accessed the European Union home pages of Apple’s website from 2005 to 2010.

 Exhibit TLP-53: (which the party also requested be kept confidential) printouts of archived pages of a selection of these European websites for the mark and goods and services that have been advertised and promoted in the national languages of the Member States of the European Union.

The witness statement affirms that, as a result of Apple’s extensive advertising and use, the ‘MAC’ trade marks have acquired third party recognition of the strength of the Mac Brand and extensive goodwill and have come to be immediately identified with Apple’s goods and services.

 Exhibit TLP-54: the United States Patent and Trade Mark Office’s Annual Report for 1999.

 Exhibit TLP-55: a copy of the Smithsonian Institution’s National Museum of American History website’s front page, as well as specific pages devoted to the display of ‘The Apple Macintosh’ home computer to illustrate the fact that Apple’s MAC computers have become a part of American history.

 Exhibit TLP-56: contains information on the presence of the marks in the art world.

Furthermore, Apple has entered various ‘high end’ alliances to promote the sale of its products bearing the ‘MAC’ trade marks and through Apple’s Mac (now replaced by iCloud) and iLife software and services (as well as other software and services). Apple also offered, inter alia, a wide range of internet-focused services specifically designed for MAC computers. Apple and its various MAC products have also been the subject matter of literally thousands of books. On 18/04/2012, a search of the Amazon.co.uk book directory for the keywords ‘Macintosh computers’ disclosed over 3 400 ‘hits’.

 Exhibit TLP-57: a copy of the Amazon.co.uk search results, showing the first 10 ‘hits’ of this search. The witness statement provides ample information in relation to Apple’s worldwide advertising and sales expenditures.

 Exhibit TLP-58: copies of the relevant pages from Apple’s 10-K Annual Reports (along with corresponding title pages) as submitted with the United States Securities and Exchange Commission which support the advertising and sales figures presented in the charts that the witness statement provides.

 Exhibit TLP-59: a confidential chart, providing details of the units sold and net revenue of Mac-branded computers in the European Union from 2001 to 2017. The witness statement mentions high figures for total advertising expenditures since 1994 and provides a table with information in relation to the European segment for the financial years from 2012 to 2019 (ending 28/09/2019).

 Exhibit TLP-60: Apple’s 10-K annual filing.

The European segment of Apple’s business represented 23 %, 24 %, 24 %, 23 %, 22 %, 22 %, 22 % and 23 % of Apple’s total net sales in 2019, 2018, 2017, 2016, 2015, 2014, 2013 and 2012, respectively, and the witness statement affirms that it is reasonable to ascribe a significant part of these sales to the European Union.

 Exhibit TLP-61: the relevant pages of Apple’s 10-K statements supporting the European segment figures.

The witness statement mentions that in total annual sales of Apple’s MAC computers worldwide, Apple has sold over 203 million since the launch of the Mac computer devices in 2001, including throughout the European Union, for net sales in excess of USD 269 billion.

 Exhibit TLP-62: discusses the future of the MAC trade marks and includes a copy of an opposition decision, B 3 046 746, that was upheld on account of the reputation of the earlier mark ‘MAC’, against the application MACXEN.

Assessment of the evidence

As far as the witness statement is concerned, 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, in the case at issue, and as has become obvious from the comments reflected above, the witness statement is very detailed and is supported by ample evidence contained in the attached 62 exhibits.

The evidence on file shows that the mark has been used for decades in Europe. The first computer to be effectively marked with the term ‘Mac’ was introduced on the market in 1999 (the Power Mac), and the goods have been updated through the years and branded with the short form ‘MAC’ under a number of signs (MAC PRO; iMac; MacOS) that are either used under the umbrella sign ‘MAC’ or contain descriptive elements that include the distinctive and reputed ‘MAC’. They have been extensively advertised through different media, they are sold in Apple shops in many of the main cities in Europe and can be purchased either in these shops, or through wholesalers and other retailers, or on the internet. Moreover, the advertising and sales figures provided by the applicant are very substantial, they have been corroborated by independent sources, and point to the goods branded under the ‘MAC’ brand(s) having a considerable share of the European market. In view of this, it is obvious that the earlier mark enjoys reputation among the relevant consumers, but only for computers and computer software.

b) The signs

MAC
Earlier trade mark	Contested sign

The relevant territory is the European Union.

The global appreciation of the visual, aural or conceptual similarity of the marks in question must be based on the overall impression given by the marks, bearing in mind, in particular, their distinctive and dominant components (11/11/1997, C‑251/95, Sabèl, EU:C:1997:528, § 23).

The earlier mark is the word ‘MAC’, which is distinctive in relation to the goods. Given that the earlier mark is fully included in the contested mark, and that the different letters ‘acc’ of the contested mark are placed at the end, the marks are visually and aurally similar to an average degree.

On account of the reputation proved by the applicant, it is feasible to assume that many consumers of the goods at issue will perceive the verbal element ‘MAC’ as ‘a Macintosh personal computer’ (information extracted from Collins Dictionary on 08/02/2021 https://www.collinsdictionary.com/dictionary/english/mac).

The contested mark as a whole does not have a meaning but consumers might link its beginning to the semantic concept mentioned above.

It follows that there are similarities between the marks on all three levels of comparison.

c) The ‘link’ between the signs

As seen above, the earlier mark is reputed and the signs show links visually, aurally and conceptually. In order to establish the existence of a risk of injury, it is necessary to demonstrate that, given all the relevant factors, the relevant public will establish a link (or association) between the signs. The necessity of such a ‘link’ between the conflicting marks in consumers’ minds is not explicitly mentioned in Article 8(5) EUTMR but has been confirmed by several judgments (23/10/2003, C‑408/01, Adidas, EU:C:2003:582, § 29, 31; 27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 66). It is not an additional requirement but merely reflects the need to determine whether the association that the public might establish between the signs is such that either detriment or unfair advantage is likely to occur after all of the factors that are relevant to the particular case have been assessed.

Possible relevant factors for the examination of a ‘link’ include (27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 42):

 the degree of similarity between the signs;

 the nature of the goods and services, including the degree of similarity or dissimilarity between those goods or services, and the relevant public;

 the strength of the earlier mark’s reputation;

 the degree of the earlier mark’s distinctive character, whether inherent or acquired through use;

 the existence of likelihood of confusion on the part of the public.

This list is not exhaustive and other criteria may be relevant depending on the particular circumstances. Moreover, the existence of a ‘link’ may be established on the basis of only some of these criteria.

The applicant argues that the ‘MAC’ marks have been used extensively throughout the European Union and had acquired a very significant reputation by the filing date of the contested mark. It also points out that the witness statement submitted demonstrates that the reputation of the ‘MAC’ marks has grown even further since the filing date of the contested mark, and they remain extremely well known as of the filing date of the invalidity action. The ‘MAC’ marks have been used extensively by Apple in relation to specific goods and services, and as a result of the consistently high levels of marketing, they have become indelibly associated by consumers with the applicant. It adds that by virtue of the distinctive nature of the ‘MAC’ marks, which has been enhanced further by Apple’s extensive use and range of MAC-related products, consumers will inevitably associate goods/services employing the verbal element ‘MAC’ in the same context as originating from Apple, or at the very least from a commercially connected undertaking.

It has been pointed out above that the marks are linked visually, aurally and conceptually through the distinctive element ‘MAC’ of the earlier mark, which is placed at the beginning of the contested mark.

In relation to the goods, according to the Court of Justice of the European Union,

It is therefore conceivable that the relevant section of the public as regards the goods or services for which the earlier mark was registered is completely distinct from the relevant section of the public as regards the goods or services for which the later mark was registered and that the earlier mark, although it has a reputation, is not known to the public targeted by the later mark. In such a case, the public targeted by each of the two marks may never be confronted with the other mark, so that it will not establish any link between those marks.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 48.)

The Court of Justice has also noted,

… that certain marks may have acquired such a reputation that it goes beyond the relevant public as regards the goods or services for which those marks were registered. In such a case, it is possible that the relevant section of the public as regards the goods or services for which the later mark is registered will make a connection between the conflicting marks, even though that public is wholly distinct from the relevant section of the public as regards goods or services for which the earlier mark was registered.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 51-52.)

The application is directed against the following goods:

Class 9: Data processing apparatus; computer peripheral devices; couplers [data processing equipment]; audio- and video-receivers; wearable activity trackers; wireless chargers; radios; batteries, electric; air analysis apparatus; wires, electric; plugs, sockets and other contacts [electric connections]; electrical adapters; wireless headsets for smartphones; smartwatches; rechargeable electric batteries.

Some of the goods are identical (data processing apparatus), others are similar (computer peripheral devices) given that they usually coincide in producer, relevant public and distribution channels, and they are complementary. Others are sold together with computers (chargers, batteries, plugs; wires; adapters) while the rest can be used with computers, sometimes even form part of them or integrate a computer in them (e.g. smartwatches). The goods on the whole belong to the same or very close sectors of trade and target the same public (either average consumers or professionals). Considering that a healthy lifestyle is quite in vogue, and that more and more tech gadgets register and analyse medical and environmental data in order for consumers to achieve a healthy lifestyle, there is clearly a connection between air analysis apparatus and the applicant’s goods. Therefore, taking into account and weighing up all the relevant factors of the present case, it must be concluded that, when encountering the contested mark, the relevant consumers will be likely to associate it with the earlier sign, that is to say, establish a mental ‘link’ between the signs. However, although a ‘link’ between the signs is a necessary condition for further assessing whether detriment or unfair advantage are likely, the existence of such a link is not sufficient, in itself, for a finding that there may be one of the forms of damage referred to in Article 8(5) EUTMR (26/09/2012, T‑301/09, Citigate, EU:T:2012:473, § 96).

d) Risk of injury

Use of the contested mark will fall under Article 8(5) EUTMR when any of the following situations arise:

 it takes unfair advantage of the distinctive character or the repute of the earlier mark;

 it is detrimental to the repute of the earlier mark;

 it is detrimental to the distinctive character of the earlier mark.

Although detriment or unfair advantage may be only potential in invalidity proceedings, a mere possibility is not sufficient for Article 8(5) EUTMR to be applicable. While the proprietor of the earlier mark is not required to demonstrate actual and present harm to its mark, it must ‘adduce prima facie evidence of a future risk, which is not hypothetical, of unfair advantage or detriment’ (06/07/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 53).

It follows that the applicant must establish that detriment or unfair advantage is probable, in the sense that it is foreseeable in the ordinary course of events. For that purpose, the applicant should file evidence, or at least put forward a coherent line of argument demonstrating what the detriment or unfair advantage would consist of and how it would occur, that could lead to the prima facie conclusion that such an event is indeed likely in the ordinary course of events.

Unfair advantage (free-riding)

Unfair advantage in the context of Article 8(5) EUTMR covers cases where there is clear exploitation and ‘free-riding on the coat-tails’ of a famous mark or an attempt to trade upon its reputation. In other words, there is a risk that the image of the mark with a reputation or the characteristics which it projects are transferred to the goods and services covered by the contested trade mark, with the result that the marketing of those goods and services is made easier by their association with the earlier mark with a reputation (06/06/2012, T‑60/10, Royal Shakespeare, EU:T:2012:348, § 48, and 22/03/2007, T‑215/03, Vips, EU:T:2007:93, § 40).

According to the Court of Justice of the European Union

… as regards injury consisting of unfair advantage taken of the distinctive character or the repute of the earlier mark, insofar as what is prohibited is the drawing of benefit from that mark by the proprietor of the later mark, the existence of such injury must be assessed by reference to the average consumers of the goods or services for which the later mark is registered, who are reasonably well informed and reasonably observant and circumspect.

(27/11/2008, C‑252/07, Intel, EU:C:2008:655, § 36.)

The applicant claims that the EUTM proprietor’s use of the contested mark would take unfair advantage of the substantial reputation subsisting in the ‘MAC’ marks and states that:

Consumers who make a connection between the contested mark and the earlier marks will (irrespective of whether they are actually confused) be predisposed to assume that the proprietor’s goods bear similar attributes. For these reasons, the proprietor will gain a commercial advantage over its competitors in the marketplace by trading upon the image and reputation of the applicant’s respected MAC marks and the positive characteristics it projects. However, that advantage would not be derived from the proprietor’s own marketing efforts, investment, skill, and innovation. Rather, it would be derived from its use of a mark similar to the applicant’s, thus associating itself with the applicant’s history, innovation, skill, marketing efforts, and investment.

The evidence submitted demonstrates that, indeed, the image projected by the goods manufactured and put on the market by the applicant’s company are associated with a special image, that of innovation, quality and functionality; in fact, Exhibit TLP-10, from CoolBrands (an annual initiative to identify the UK’s coolest brand), demonstrates the following: ‘Sleek, stylish design combined with powerful, groundbreaking technology make Apple’s range of products iconic must-haves around the world’. Exhibit TLP-11 is a copy of a press release that describes a survey called ‘European Passion Study’ conducted among 10 000 Europeans by Panelteam (an online research agency) in which Apple was ranked first in the list of brands that Europeans felt most passionately about.

On account of the extraordinary degree of reputation of the mark, the fact that this reputation is connected with positive characteristics, that the goods are very close and present in the same market, or could be associated with the trendy image projected by the mark, and that the public is the same, the contested registration will take unfair advantage of the repute of the earlier trade mark.

As seen above, the existence of a risk of injury is an essential condition for Article 8(5) EUTMR to apply. The risk of injury may be of three different types. For an application to be well founded in this respect it is sufficient if only one of these types is found to exist. In the present case, as seen above, the Cancellation Division has already concluded that the contested trade mark would take unfair advantage of the repute of the earlier trade mark. It follows that there is no need to examine whether other types also apply.

Conclusion

Considering all the above, the application is well founded under Article 60(1)(a) EUTMR in conjunction with Article 8(5) EUTMR in relation to European Union trade mark registration No 11 871 225. Therefore, the contested trade mark must be declared invalid for all the contested goods. Given that the application is entirely successful under Article 8(5) EUTMR, it is not necessary to examine the remaining grounds and earlier rights on which the application was also based.

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(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

Natascha GALPERIN

María Belén IBARRA DE DIEGO

Richard BIANCHI

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.