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Peter Schramm
Guillaume Fournier
The Swiss Supreme Court reversed a decision held by the Federal Administrative Court in the trademark Apple case involving jewelry and videogames. According to the Swiss Supreme Court, APPLE can be protected as a trademark for jewelry (cl. 14) and electronic toys including computer games (cl. 28). The court finds that APPLE is one of the most well-known brands in the world. Thus, the average consumer does not understand it as a fruit, but directly as an indication of a certain company.
Appeal against a decision of the Institute for Intellectual Property to deny registration of a trademark for certain goods
The Institute for Intellectual Property (IPI) refused to protect (at least partially) the sign of APPLE for jewelry goods of cl. 14 as well as games, playing cards, for electronic games, manually operated and electronic computer games, video games, interactive games and interactive computer toys of cl. 28. According to the IPI, APPLE describes the shape or the motive respectively the three-dimensional features of those goods instead of indicating their commercial origin.
In its appeal, Apple argued that that understanding of the relevant public was no longer correct. In view of Apple’s high reputation, the relevant public’s understanding was that there had been a change in meaning and that the term “Apple” was no longer understood in the sense of “apple” but was perceived as referring to Apple as a company.
Apple as a symbol in its literal meaning
In its decision of 24 July 2018 (Case no. B-6304/2016; see MLL-News of 1 September 2018) the Federal Administrative Court largely upheld the decision of the IPI. According to the Court, when assessing the original distinctive character of a sign, the sign must be appraised in an abstract way. The Court noted, that the reputation may be taken into account. Apple did, however, not raise this issue.
According to the Federal Administrative Court, the word APPLE is part of the basic English vocabulary and therefore also understood by the average consumer in its literal meaning. The apple, as a fruit, has a strong symbolic meaning in fairy tales or religion and jewelry and toys would often take on the form of an apple for this very reason. Thus, the Court rejected the registration of APPLE for the claimed goods.
The literal meaning of a daily common good outranked by the reputation of a company
The Swiss Supreme Court reversed this decision on 9 April 2019 (Case no. 4A_503/2018). Whether a word is descriptive of the goods and services in respect of which registration is sought and is in the public domain depends on whether the sign has a perceptible meaning. If a word has several meanings, the meaning which, from the point of view of the relevant public, is most important in relation to the claimed goods must be used to assess the distinctive character of the sign. In most cases this understanding corresponds to the literal meaning of the term. However, if a word is no longer understood in its literal sense by the relevant public, but primarily as an indication of a certain company, this cannot go unnoticed in the registration procedure.
Apple is one of the most well-known brands in the world due to its outstanding reputation. Thus, the average consumer does not assimilate it to the fruit, being its literal meaning, but directly as an indication of a certain company. A considerable part of the Swiss public knows that the English term APPLE means “Apfel“, “pomme” or “mela” translated into German, French or Italian. However, in the case of goods other than fruits, the average consumer will immediately recognize an indication of the undertaking concerned in the foreign-language word APPLE.
As a consequence, the Court declared that the lower instances had violated Art. 2 lit. a of the Trade Mark Protection Act by denying to Apple the registration of its trademark for the claimed goods.
Conclusion
With this decision, the Swiss Supreme Court corrected a rather broad interpretation of the range of the descriptive character of the word “apple” held by the lower instances. While this is not surprising with regard to videogames, it could raise questions about jewelry. One could ask, for instance, whether an apple-shaped earring could violate the trademark of Apple. That being said, the Court rightly acknowledges the fact that the reputation of a brand cannot be excluded from the assessment of the distinctive character of the sign, especially when it represents the most important meaning, as understood by the relevant consumer public, with regard to the claimed goods.
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