Apple’s iPhone trade mark Challenges Struck Out in UKIPO

Apple Inc ("Apple") have successfully struck out two cancellation actions against their UK trade mark registrations for iPhone.

The cancellations filed by Mr Razvan Radu ("Mr Radu") were made against Apple's 'iPhone' registrations relying on 3(1)(b) and (c) of the Trade Marks Act 1994 ("TMA") which states that marks shall not be registered if they are:  

• Devoid of any distinctive character

• Consist exclusively of signs or indications which may serve, in trade, to designate the kind, quality, quantity, intended purpose, value, geographical origin other characteristics of goods or services.

Apple's claims regarding strike out

Apple applied to strike out the cancellation applications filed by Mr Radu are an abuse of process and should be struck out for collateral and improper purpose or in accordance with the Jameel principle. The Jameel principle applies in proceedings where the court believes the costs of defending and determining a claim would be out of proportion to any likely benefit to the claimant.  

Collateral and Improper purpose

Apple made three claims under this heading:

• Mr Radu tried to extract revenue from Apple by requesting in his pleadings for an award of costs to cover his loss of earnings.

• Mr Radu sought to "vex Apple and put Apple to considerable expense" by attempting to cancel a number of Apple's marks in the UK and EU. Apple also submitted that Mr Radu must be aware that the cancellation actions under the section 3 grounds were hopeless.

• Mr Radu intended to improperly acquire Apple's trade marks for his own use and financial benefit as there is no evidence Mr Radu was using and/or intended to use his applied for marks, which incorporated Apple's own trade marks. Mr Radu sent multiple emails to Apple which aimed to force them to surrender their trade marks in what he called "a discreet solution" in order to avoid the cancellation actions. Having received no response, he filed the cancellation cases against the iPhone trade marks and filed new trade mark applications for the marks below, both in the UK and EU, which Apple claimed "wholly subsume Apple's 'iPhone', 'iPad' and 'iWatch' marks."

Apple concluded that if the hearing officer is satisfied that it should succeed in respect of its grounds for striking out the cancellation applications, the hearing officer must be satisfied that it is correct to exercise the tribunal's discretion.

Decision

The tribunal's authority to strike out the cancellation applications for being an abuse of process

In line with the decision in Sherlock Systems v Apple Inc, the hearing officer determined that the registrar possesses the authority, in principle, to dismiss the cancellation applications that Apple requested to be struck out in this case.  

The hearing officer found that the evidence presented by Apple, specifically Mr Radu's request for compensation for loss of earnings in his statement of case, to be insufficient to support the claim that the cancellation applications were filed with the intent to extract revenue from Apple.

The hearing officer noted that the cancellations were filed under sections 3(1)(b) and 3(1)(c) TMA and it logically follows that while the iPhone trade marks may initially appear descriptive or non-distinctive for internet phones or smart phones, they clearly meet the requirements for acquired distinctiveness for these goods and related items, such as phone chargers.

As Mr Radu did not attend the hearing to explain his refusal to acknowledge that the iPhone is factually distinctive for phones and related goods, the hearing officer agreed with Apple that Mr Radu's cancellation cases had no reasonable chance of success.

Moreover, the tribunal has a responsibility to manage its proceedings efficiently and in line with the overriding objective of handling cases justly and at proportionate cost. Given this context, the hearing officer concluded that allowing Mr Radu's cancellation actions against the iPhone trade marks to proceed would result in a significant waste of time and resources.

The hearing officer found that the nature of Mr Radu's pattern of filings, his correspondence with Apple and his submissions to the tribunal indicated an attempt to pressure Apple into relinquishing its iPhone marks, thereby clearing the way for Mr Radu's own trade mark registrations .   

The hearing officer also determined that the cancellation applications were filed for an ulterior purpose, without which these proceedings would not have been initiated. Further, the ulterior purpose was deemed improper, constituting an abuse of process.

The cancellation applications were therefore struck out.

The Jameel principle

The Jameel principle had not been tested in respect of cancellation proceedings brought on absolute grounds and having found in Apple's favour on its first ground for strike out, the hearing officer saw no need to decide this point.

Status of the decision

This was a provisional decision. A final decision will be issued after deciding on costs.

Our thoughts

Charlene Nelson, Managing Associate (Chartered Trade Mark Attorney) said "This decision shows the importance of only bringing claims where there lies a reasonable chance of success. The lack of evidence to support the applicant's claims and the absence of the applicant during the proceedings added to the applicant's failure in their action demonstrating the consequences of failing to engage properly with proceedings".