In a recent decision (judgment of June 8th 2022 in cases T- 26/21, T-27/21 and T28/21) the European Court of Justice had to decide on the possible cancellation of three trademarks of Apple Inc., all having as object the word sign “THINK DIFFERENT”, famous advertising slogan of the Cupertino company.
The American company was the owner of three different European trademark registrations for the sign in question which claimed, among other things, products such as computer, hardware and software etc., included in class 9. The first was obtained on September 6th 1999, the second on November 18th 1999 and the third on May 18th 2006.
On October 14th 2016, Swatch AG (Swatch) filed three applications for revocation of the trademarks above mentioned and, in the proceedings thus instituted, Apple had to submit evidences of use of the trademark.
Among the documents produced in this regard there was a declaration of the head of the Legal Department of Apple in which there was a reference to the 1997 advertising campaign titled “Think Different”, to the awards won for it and to the related advertising costs paid, as well as to the sales data for the period 1994-2016.
The declaration contained even photos, though without date, of labels bearing the sign in question attached on the packaging of iMac computers. Moreover, Apple had presented several articles published between 1997 and 2016 and annual reports for years 2009, 2010, 2013 and 2015, as well as other documentation.
In the previous phase the EUIPO Court of Appeals, by confirming the decisions with which the Cancellation Division had declared the revocation of the three trademarks, considered that the pieces of evidence provided by Apple did not demonstrate the effective use of the trademark. As a matter of fact, the relevant period for the evidence was the five-year time from October 14th 2011 to October 13th 2016, that is the one preceding the applications for revocation. Since the marketing campaign titled “THINK DIFFERENT” was of 1997, the Court of Appeals highlighted that the campaign dated back over 10 years before the relevant period and therefore could not be taken into consideration. Other evidences proved only the occasional use of the trademark.
Moreover, by examining another block of evidence, the Court of Appeals pointed out that the photos of the packaging produced by Apple showed the use of the sign only on one spot of the packaging, under the list of technical features, in a rather small font and placed after the word “Macintosh”, which was the trademark used at the time, by the owner to distinguish their computers.
According to the Commission, the highly technical nature of the products in question (primarily iMac computers) and the length of the text on the relative packaging, written in small font, could have made it possible for the referring public to perceive “THINK DIFFERENT” as an advertising slogan which ultimately invited the consumers to “think outside the box”.
Therefore, such use was not appropriate to prove the effective use of the trademark.
The Court appointed confirmed that the trademark “THINK DIFFERENT” represented “only a rather insignificant space close to the barcode” and that it could not be particularly representative even considering that at times the products examined are presented to the consumer without packaging or can be purchased online, on the basis of information available on special catalogues or on the Internet.
In light of the above, the Court considered the sign “THINK DIFFERENT” lapsed, its use not having been proved, and above all it qualified it with a rather weak distinctive character as it is not able to fulfill its essential function of identifying the industrial origin of the products.