Since 2015 when Apple launched the Apple Watch, the technology giant has been involved in various trademark disputes with Swatch, a Swedish watch manufacturer. Cases have various marks including: ‘iWatch’ and ‘iSwatch’; ‘Tick different’ and ‘Think different’; and most recently Apple has lost the legal battle over the use of the phrase “one more thing”.
The Swedish watchmaker applied to trademark the phrase, however, Apple objected and claimed that it had been associated with its products for over 20 years and that the application had been made in bad faith.
What is a trademark?
Trademarks are a way of distinguishing the goods or services of one trader from another. Many things can be registered as a trademark – logos and names are the most common.
Although a trademark needs to be unique, it can be similar or identical to another as long as it is in an unconnected, different class. If a competitor is using a similar trademark that you were first to use, you must prove that customers are likely to be confused by the comparable mark.
If your trademark is not registered there is a risk that someone else may stop you from using it. However, there is scope to push back based on “unregistered rights”. The law allows for a trademark to be invalidated if it has been made in “bad faith”- for instance, if someone only registers the name of a business because the owner hasn’t yet. However, this is not a straightforward process and can take up a lot of resources.
The Case
Initially, Swatch applied to register the mark “one more thing” in several jurisdictions.
Apple argued that the application had been made in “bad faith” as the catchphrase was synonymous with Steve Jobs. The pioneer had used it repeatedly in Apple Keynotes when announcing the launch of new products and the company claimed that Swatch should not be allowed to use its trademark over the phrase. Apple also proceeded to apply for its trademark.
Although the Hearing Officer on the case did not consider Jobs’ use of the phrase to be enough to turn it into a ‘distinguishing sign’, he did accept Apple’s wider argument of bad faith. Swatch appealed this decision, opposing Apple’s accusations and claiming that the phrase was inspired by the TV detective “Columbo” – who often said, “just one more thing” – to launch a “film noir-inspired set” of watches.
The long-lasting legal battle finished in the High Court in London when Judge Iain Purvis overturned the previous court ruling. He stated that the fact Swatch was motivated by a wish to annoy or parody Apple could not be sufficient to amount to bad faith.
“Annoyance of a business is not a concept which is capable of objective analysis.”
Further, the presiding judge was of the view that the Hearing Officer’s decision had been founded on an intention to use a trademark in a way that was deemed unfair and would materially compromise Apple’s business. However, no example or evidence of this had been provided. Thus, it was not appropriate to deduce that Swatch’s intentions had crossed the line between the appropriate and inappropriate use of a trademark.
“I do not consider that it is an inherently dishonest business practice to use a sign which brings another trader to the mind of some consumers in an amusing but inoffensive way. Such an activity would not necessarily undermine the interests of the third party in any material way.”
While this case presented an innovative perspective on bad faith concerning “parody”, it confirms the importance of substantial and compelling evidence of actual use of prior marks to identify the commercial origin.
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