Apple Inc applied to the Swiss Trade Mark Office to register the word mark IPHONE for broadly worded goods in classes 9 and 28, the specified class 9 goods being essentially telephones and functionally related products. The Office rejected the application for the class 9 goods on the grounds that the mark IPHONE will be immediately understood by consumers as describing a telephone with internet- or information technology-related functions, and accordingly represents a non-distinctive, descriptive indication.
Apple appealed the decision to the Federal Administrative Court and argued essentially that the prefix "I" of the mark IPHONE can have numerous different meanings, all of which will seem equally likely to the addressed market circles. According to Apple's argument, the numerous possible meanings of the mark will thus evoke various different associations in the addressees, resulting in uncertainty as to the meaning of the mark. Apple also argued that even if the mark were to be considered to represent a mutilation of the term "internet phone" or "information/information technology phone", it would still qualify as distinctive because it represents an original new coined word. Finally, Apple cited a number of previously allowed registrations which Apple argued were comparable, and claimed equal treatment with these registrations. Apple did not assert acquired distinctiveness of its mark.
The Administrative Court in its decision on the case held that the letter "I" can feature different meanings, but that in connection with the specified class 9 goods, the obvious interpretation of the mark is as a descriptive reference to a telephone with internet or information or communication technology functions. Nevertheless, the Court stated, the exact meaning of the letter "I" combined with the word "phone" will remain unclear to consumers. The Court then however stated that regardless of the exact meaning of the letter "I", this single letter is not sufficient, when combined with the weakly distinctive element "phone" which must remain free for use in commerce to establish the distinctiveness of the mark. Finally, the Court held that the registrations cited by Apple were not comparable to the present case. Accordingly, the Court rejected the appeal and confirmed the decision rejecting the application for IPHONE in class 9.
The Administrative Court's decision has been appealed by Apple to the Swiss Federal Supreme Court, which will now have the last word on the matter.
|Brendan B Bolli and Rainer U Schalch|
E Blum & Co AG
CH-8044 Zurich, Switzerland
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