THINK DIFFERENT: Apple vs. Swatch

Non-use of trademarks

Apple's slogan THINK DIFFERENT is famous. But it has also been at the center of a trademark dispute between Apple Inc. (USA) and Swatch AG (Switzerland) for a few years now. Does a slogan as famous as THINK DIFFERENT seriously need to prove that it is being used as a trademark?

Apple and THINK DIFFERENT – the back story

The story is quickly told: in November 1997, the applicant Apple applied for an EU trademark at the European Trademark Office (EUIPO). It was a word mark for the term THINK DIFFERENT, claiming protection for many goods in Nice Class 9, mainly computers, storage media and devices for telecommunications (EU Trademark No. 671 321).
In June 1998, Apple applied for a second union trademark for the term THINK Different (Case T-27/21), and finally, in 2005, for a third union trademark for this term (Case T-28/21).

Years later, in October 2016, the intervener, Swatch AG, filed three applications with EUIPO for revocation of the contested marks. Swatch claimed that the three Apple THINK DIFFERENT marks had not been put to genuine use for an uninterrupted period of five years, relying on Article 51(1)(a) of Regulation 207/2009 (now Article 58(1)(a) of Regulation 2017/1001).

Non-use of a trademark: 5-year period

In the case of an application for revocation of a trademark, the relevant period is relevant in relation to the filing of the application. Specifically for this case, this means that since Swatch's revocation application was filed on October 14, 2016, in order to defend its trademarks, Apple had to provide evidence of genuine use of those trademarks in the European Union for the five years preceding that date, i.e., from October 14, 2011 to October 13, 2016.

Apple was indeed able to provide evidence of use of the marks for that period, but only photographs of the packaging of an iMac desktop computer to which the challenged marks are affixed and a printout from Apple's website listing all iMac product numbers along with the date they were first marketed.

The large-scale marketing campaign for the introduction of the Apple trademarks, which was reported on and off-line in all major business newspapers at the time, was not relevant, as this of course took place in the late 1990s.

EUIPO: Evidence from Apple not sufficient

The Board of Appeal of the EUIPO, however, found Apple's evidence insufficient, since the contested marks were positioned in a small place with small letters on the packaging. Positioned in this way, consumers would perceive the elements "think different" as an advertising message, the Board of Appeal decided, and granted the application for revocation of the marks.
Apple appealed this decision to the European Court (CFI), which ruled on all three marks on June 8, 2022 (T 26/21 to T 28/21).

CFI: no genuine use of the Apple trademarks

The CFI upheld the contested decision and, like the EUIPO, found that no genuine use of the Apple trademarks had been established. In the contested decisions, the Board of Appeal had provided sufficient legal justification for the question of whether the applicant had provided evidence of genuine use of the marks at issue, the CFI found.
In vain, Apple argued that it had not been given a sufficient opportunity to be heard and that the three contested decisions were insufficiently reasoned in three respects.

Apple argued that the Board of Appeal failed to,

(i) dexplain why consumers would be unlikely to examine the packaging of iMac computers and their technical specifications,

(ii) explain why the perception of the non-English speaking public was not taken into account; and

(iii) to set forth the reasons why the evidence of the immense fame of the term THINK DIFFERENT should be disregarded and why the word elements of the challenged marks contained nothing more than an advertising promise.

Being famous is not relevant: THINK DIFFERENT marks

But the CFI rejected this. The Board of Appeal had given sufficient legal reasons why the submitted evidence of trademark use was insufficient, and it had also relied on the relevant evidence. Even if consumers and purchasers of iMac computers should have been accorded a high degree of attention, that did not alter the Board of Appeal's correct conclusion that the marks at issue occupy only a rather insignificant place next to the bar code. In any event, applicant Apple has not shown that such a consideration would have led the Board of Appeal to believe that consumers would examine the packaging in detail and pay particular attention to the marks at issue.

In turn, the worldwide recognition of Apple's slogan THINK DIFFERENT cannot be taken into account without evidence for the relevant period. The CFI emphasized that the requirement of genuine use of the earlier mark does not consist of assessing commercial success or reviewing the commercial strategy of an undertaking, nor does it consist of limiting trademark protection to cases where the marks are used extensively in commerce. Likewise, genuine use does not include symbolic use, which serves solely to preserve the rights conferred by the mark.

Finally, the CFI found that the manner in which the marks at issue are used on the packaging of iMac computers does not support the conclusion that they have been used as trademarks. Apple's claim was dismissed in all three proceedings (R 2011/2018-4, R 2012/2018-4 and R 2013/2018-4).

The revocation of Apple's THINK DIEFFERENT trademarks was upheld.

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