23 March, 2017
Spruson

Apple Inc. [2016] NZIPOTM 29 (9 December 2016)

Apple Inc. [2016] NZIPOTM 29 (9 December 2016)

Apple applied to register the trade mark IWATCH in New Zealand in relation to various electronic goods in class 9 as well as chronometric instruments and accessories in class 14.

The New Zealand Trade Marks Office (“IPONZ”) issued a notice of intention to reject the application on the basis that the mark is descriptive and non-distinctive.

The rejection was subject to a request for a Hearing by Apple.

Despite Apple’s arguments and evidence, the Assistant Commissioner upheld IPONZ’s position that the trade mark IWATCH is descriptive and non-distinctive. However, the Assistant Commissioner was satisfied that the evidence provided was sufficient to support a conclusion that IWATCH has acquired distinctiveness on the basis of “other circumstances”.

In particular, the Assistant Commissioner noted that while the trade mark IWATCH was not used in New Zealand prior to the priority date, other circumstances demonstrated that, at the relevant date, average consumers would recognise IWATCH as a badge of origin.

Of notable interest, the Assistant Commissioner mentioned the following circumstances:

  • At the relevant date, a significant proportion of consumers in New Zealand were aware of Apple’s “I”-prefix family of marks.
  • The evidence showed that media and consumers expected Apple’s smart watch to be named IWATCH, prior to the launch of that product, indicating that the average consumer perceived IWATCH as a trade mark, synonymous with Apple, at the filing date.

The Assistant Commissioner directed IPONZ to accept Apple’s application.

To view the Office decision, click here.

This article is an extract from Spruson & Ferguson’s Asia-Pacific Regional Trade Mark Update. You can view the entire summary here.


TRACEY BERGER

Principal / Trade Mark Attorney
Trade Marks Team
Sydney, Australia
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CAROLE RAABE

Associate / Trade Mark Attorney
Trade Marks Team
Sydney, Australia

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