Apple has failed in its attempt to block the registration by Swatch of trade marks for “ONE MORE THING” and “SWATCH ONE MORE THING”[i]. The High Court rejected Apple’s argument that Swatch intended to use the marks to parody Apple and that this amounted to bad faith. Even if parody was the intention – and this might be annoying to Apple – it did not necessarily amount to a dishonest business practice that would justify a finding of bad faith.
Background
As all good Apple fans know, the phrase ONE MORE THING is associated with Steve Jobs, who used it in promotional launches. Jobs would appear to finish his presentation, walk away and then turn back, Colombo style, to add a major announcement – but there’s one more thing. In 2015, Tim Cook revived the phrase with the introduction of the Apple Watch. Shortly after this, Swatch filed their trade mark applications. Apple opposed.
Apple’s challenge was initially successful in the Trade Mark Registry’s opposition procedure. The Hearing Officer accepted Apple’s argument that Swatch’s intention was to use the marks to parody Apple and that this amounted to bad faith. Bad faith is an “absolute” ground for refusal under the UK Trade Marks Act, so this would have resulted in the failure of the applications.
High Court switches to Swatch
However, on appeal the High Court held that there was no clear evidence that Swatch intended to use the trade marks parodically to undermine Apple’s business. Much of the evidence presented by Apple on this point seems to have been speculation based on articles written by third parties. In fact, in what may have been a tactical move, Swatch had not provided clear evidence of how it intended to use the marks at all. The judge considered whether “the simple fact that Swatch was motivated by a desire to annoy Apple” could be sufficient to amount to bad faith but concluded that it was not, on the basis that “annoyance of a business is not a concept which is capable of objective analysis”.
Implications for trade mark owners
The argument that a trade mark has been applied for in bad faith can be used to oppose the registration of a trade mark and also to invalidate an existing registration. Bad faith typically arises where a person applies for a trade mark without intending to use it as a trade mark to indicate the origin of goods or services, thus effectively blocking third parties from using a mark which it has no intention of using itself. However, this is not an exhaustive description and other situations may arise which amount to bad faith. This is the first case to consider parodic use. Although in this case the argument did not succeed, the judge[ii] indicates that there may be cases in which a mark is so inherently offensive that any use of it must “inevitably transgress honest business practices” amounting to bad faith.
Emily Heenan