A review of prosecution difficulties in Apple Inc 2015 ATMO 74

It is occasionally the case that a successful product can transcend its inherent functional value, and become a cultural icon in its own right. Coca-Cola bottles, Levi jeans, and the Sony Walkman have all arguably attained this status. The visual appearance of these products can become as iconic as the product itself, and brands often seek legal protection for this aspect through the use of Registered Designs. In some cases, such as Apple’s iPhone, the company considers their product design to be so distinctive and important to the company as to constitute a formal trade mark in itself, and seek to protect the product shape through trade mark registration. These are known as “shape trade marks”.  However, a product’s shape is always to some extent influenced by its function and this can raise challenges to its successful registration as a trade mark. A recent Australian case involving Apple demonstrates some of the difficulties brands face in successfully registering shape trade marks, and some of the approaches that are unlikely to succeed in prosecution.

 Background

On 14 June 2011, Apple Inc. (‘Apple’) applied for an extension of protection of an international trade mark registration, to Australia.  The trade mark consists of the shape of the well-known telecommunication device, sold as the iPhone 4.  A copy of the representation of the trade mark is below:

Click here to view the image.

The International Registration Designating Australia (IRDA) was examined by IP Australia and a ground for rejection identified.

Five examination reports were issued, in which the Examiner was repeatedly unwilling to grant acceptance, even after Apple submitted evidence of use. As a result, Apple requested to be heard. 

 Inherent Adaptation to Distinguish

In the decision, the Hearing Officer made reference to the test set out in a Federal Court case addressing shape marks – Chocolaterie Guylian N.V. v Registrar of Trade Marks [2009] FCA 891 where the Court stated:

The ultimate question on the issue of inherent adaptation is whether a sign – in this case, a shape – possesses any ordinary significations and, if it does, whether or not other traders might think of the shape and want to use it for those ordinary significations in a manner which would infringe a registered mark in respect of the sign. In cases where a shape depicts a known object or concept (cf. wholly concocted or ambiguous shapes), and is therefore likely to signify the same to most if not all consumers, then a subsidiary question is whether the shape is nevertheless sufficiently distinctive or unique so that other traders wishing to represent the same or a similar concept will remain free to do so without infringing the mark, that is, without requiring use of the same shape or one substantially identical or deceptively similar. An important consideration in all of this is the nature of the goods for which the shape mark is to be used.

The Hearing Officer then discussed Apple’s submissions that their trade mark is inherently adapted to distinguish their goods i.e. the relevant mobile phones.  They submitted that Apple is the owner of two other Australian trade mark registrations, which are for 2-dimensional representations of their iPhone telecommunication devices.  Due to these existing registrations, Apple submitted that it is unlikely that other persons trading in the relevant goods would, without improper motive, wish to use the present trade mark (a similar 3D representation) on or in relation to their goods. 

The Hearing Officer rejected the above arguments, stating that the question of whether a particular trade mark is inherently adapted to distinguish its designated goods cannot be answered by highlighting the existence of other possibly similar trade mark registrations and further stated that each trade mark must be assessed on its own merits. The Hearing Officer referenced Ocean Spray Cranberries Inc. v Registrar of Trade Marks (2000) 47 IPR 579:

Marks may, in the past, have been wrongly registered. It would be an unwarranted distraction from the task at hand to investigate, in a particular case, whether they were or not. 

Form and Function

The Hearing Officer then moved on to discuss how a shape which is dictated by the nature of the goods or by the need to achieve some particular technical result or functional outcome cannot operate as a trade mark.

Apple had submitted that its trade mark is comprised of the following distinguishing features: 

  1. It is a 3-dimensional rectangular shape;
  2. The corners of the shape are rounded; and
  3. The upward facing surface features an oblong at the top and a circle with a concave aspect at the bottom.

The Hearing Officer rejected the first feature in its entirety, stating that this feature does nothing to imbue the trade mark with any inherent ability to distinguish from other handheld electronic devices – which are all very likely to take the form of a 3-dimensional retangular shape.

Secondly, the Hearing Officer rejected the contention that the rounded corners were distinctive, stating that rounded corners on a handheld electronic mobile device are also common, and do nothing to provide the trade mark with any inherent adaptation to distinguish the designated goods.

The Hearing Officer then states that the only notable, and what appear to be (in the main) aesthetic, elements are the oblong at the top and the circle with a concave aspect at the bottom.  However, these were not deemed sufficient when considering the trade mark as whole to render it prima facie inherently adapted to distinguish and therefore, the Hearing Officer decided that the objection raised by the Examiner was correct and that Apple would need to establish evidence of use, intended use or other circumstances to convince that the trade mark does or will distinguish in consumers’ minds.

 Evidence of Use

During examination, it appears that the Examiner had identified two bases for rejecting Apple’s significant evidence of use, including:

  1. the evidence did not demonstrate continuous use; and
  2. the demonstrated use was not of the trade mark in or by itself but rather accompanied by other identifying trade marks. 

The Hearing Officer acknowledged that Apple was very well known in Australia, but stated that this has no direct bearing on whether the present trade mark does or will distinguish the designated goods if evidence of the nature and/or extent of that use is lacking.  Before discussing the evidence of use in detail, the Hearing Officer stated:

It must be remembered that the broken lines in the representation of the Trade Mark do not form part of it. As a result, the Trade Mark comprises neither the screen itself, nor the buttons on the side, nor the in-built camera and ports at the bottom of the device. The Trade Mark is (to reiterate) an oblong with rounded corners, a speaker slit at the top and a concave circle at the bottom. The issue is whether these elements used in conjunction do operate or can operate as a trade mark.

The Hearing Officer acknowledged Apple’s overwhelming sales figures relating to the device, however the Officer pointed out the difficulties in making a judgement concerning evidence of the shape of a device which is constantly being refined and changed over time.  The Hearing Officer was of the view that the question to be asked was whether the shape, without the other features, would perform that task of demonstrating the capability of the present trade mark to distinguish the goods.

Keeping in mind that the Hearing Officer had formed the view that the only distinctive features of the trade mark were the oblong at the top (the speaker) and the circle with a concave aspect at the bottom (the home button), upon review of the evidence submitted by Apple, little or no emphasis of these features of the trade mark could be identified.  Although the Hearing Officer conceded that there was evidence to support use of the home button in advertisements, it was felt this was not specifically extolled as a feature by the Applicant. 

Apple submitted as evidence a survey of consumers seeking to demonstrate their recognition of the product’s shape as an Apple product. The Hearing Officer was critical however of Apple’s survey evidence, as it appears the survey supplied a picture of the trade mark, as it appears on the Register and as reproduced above, to the participants, asking the question: “Now looking at the picture above. Do you know what this is?” Apparently, 60% of respondents identified the product as being an iPhone or a similar product produced by Apple.  However, Apple has not sought to register the entire shape featured in the picture, and the Hearing Office was of the view that if the extra features in dotted lines had been omitted from the representation to reflect the true nature and scope of the trade mark, it is likely that the recognition amongst Australian consumers would have been significantly lower.

In conclusion, the Hearing Office stated:

I find it likely that a majority of Australians would recognise the Holder’s iPhone 4 device with all of its elements in combination. The popularity of the product in Australia (demonstrated by the Holder’s evidence) generates this level of recognition. I am not satisfied that, stripped of most of the aesthetic elements that would likely render the Holder’s mobile device shape memorable as a whole, the Holder has demonstrated the Trade Mark does or will distinguish the goods.

The Hearing Officer rejected the application for extension of protection of the international registration to Australia.  It is interesting to note that it appears the Applicant has also been unsuccessful in extending protection of the international registration in all other designated jurisdictions, including Switzerland, China, South Korea, Russia, Singapore and Turkey. 

 Conclusion

This case highlights some of the difficulties in prosecuting shape trade mark applications for well-known products, where the shape depicted in the application includes only some of the physical attributes of the actual product. Although, strategically, removing from the trade mark application the parts of the product that are likely to change and evolve over time may appear to be advantageous, particularly in the electronics industry, it then can be very difficult to establish use of the trade mark as filed.