How close can you go?

Yet another case of potential interest for trademark aficionada. /MW

Case No. B-1176/2017 (FAC) | Decision of 10 January 2019

Apple surely is one of the most iconic brands. The look and feel of Apple is still pretty unique, in my perception. But every successful brand is challenged once in a while, and this is very likely not the first time that Apple intervenes against others using or claiming ‘their’ bite in something.

Still, this is a special one. Apple lodged a trademark opposition based on its older trademarks CH P-502’206 (which is the iconic apple with a bite); and CH 640’382 (which apparently is only the leaf thereof):

The trademark in dispute was the Swiss part of IR 1’292’997 that incorporates some elements of Apple’s trademarks:

IR 1’292’997; j (fig.)

Still, Apple’s attempt to get the trademark canceled had been unsuccessful in first instance at the IPI (order of 24 January 2017; unpublished). Apple appealed — and lost again at the FAC; decision of 10 January 2019.

In a nutshell, the FAC held that despite some visual similarities of the trademarks, there was no likelihood of confusion. First, the characteristic feature of the CH’206 trademark, i.e. the apple, is not found in the trademark in dispute. And second, even though CH’382 is identically featured as a minor part of the trademark in dispute, its overall visual appearance is different; the FAC held that the leaf is only a trivial symbol, and its distinctiveness is low.

Noteworthy, the defendant did not participate by any means in the proceedings, neither in writing nor at the hearing.

iGod

The present trademark dispute was not the first clash of the parties. The trademark owner and his brother founded a company in Italy that is named after Apple’s godfather Steve JOBS who sadly passed away in 2011 at the age of only 56: The name of the company is Steve Jobs Inc. (no kidding!).

What likely had raised even more concern in Cupertino than the mere logo and the name of the company was the registration of the logo combined with the name ‘Steve Jobs’ as an EU trademark (No. 011041861).

Apple’s opposition against the stylized trademark had been rejected by an opposition division of the EUIPO already in 2014.

And, even worse: The brothers also got an EU trademark with just the words ‘Steve Jobs’ registered (No. 011687316). I could hardly believe it, but it seems to be true: Apple never applied for a trademark ‘Steve Jobs’. The plain ‘Steve Jobs’ trademark remained unapposed.

Steve Jobs Inc. apparently started with fashion. With jeans! I cannot recall a single keynote given by Steve JOBS without his jeans …

Jeans by Steve Jobs Inc.

Steve Jobs Inc. seemingly envisages to step onto Apple’s home turf with electronics and smartphones; see this report in ‘The Telegraph’ of 29 December 2017.

I cannot help but wonder whether we will see additional action taken by Apple against Steve Jobs Inc.

Reported by Martin WILMING

BIBLIOGRAPHY

Case No. B-1176/2017 (FAC) | Decision of 10 January 2019

Apple Inc.
./.
Vincenzo BARBATO

Panel of Judges:

  • David ASCHMANN
  • Maria AMGWERD
  • Pietro ANGELI-BUSI

Court Clerk:

  • Agnieszka TABERSKA

Representative(s) of Apple:

FULL TEXT DECISION

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