Case Note Re: Apple Inc v Swatch AG [2019] ATMO 19 (8 February 2019)

Apple Inc. (“Apple”) opposed the extension of protection to International Registrations designating Australia for SWATCH ONE MORE THING (IR no. 1261460/Australian application no. 1715688) and ONE MORE THING (IR no. 1261461/Australian application no. 1715689) in classes 9 and 14 in the name of Swatch AG (“Swatch”). Both oppositions were heard together.

The oppositions were based on sections 42(b), 58, 59, 60 and 62A. The main basis for the oppositions was Apple’s alleged reputation in the phrase “ONE MORE THING” arising from the regular use of this phrase in keynote addresses by senior officers of the company from 1998 onwards, especially by Steve Jobs (until around 2011) when delivering his “Stevenotes”. The phrase would typically be used before introducing a new product, service or feature, and would often also be shown on a slideshow behind Mr Jobs. The audience apparently came to anticipate and celebrate the use of the phrase. After Mr Jobs’ death, the phrase was revived by new CEO Tim Cook in 2014, both in spoken form and shown on a screen behind him (at which “the crowd erupted”). An unofficial biography of Mr Jobs was also titled One More Thing.

The hearing officer found against Apple. Whilst the phrase “ONE MORE THING” functioned as a “trade mark” of Mr Jobs in the colloquial sense of being his signature phrase, the hearing officer found that Apple had not been using the phrase as a trade mark, in the relevant sense, to distinguish its particular goods and services from those of other traders. The hearing officer was also not satisfied on the evidence that the use of the phrase by Mr Jobs/Apple had become known amongst a significant number of people in Australia.

The hearing officer commented:

• Whilst the phrase was often used when introducing a new Apple product, feature or service, it was also used for other purposes (e.g. when Mr Jobs announced he had been permanently appointed CEO and when announcing a live performance to be given by John Legend).

• When the phrase was used to introduce a new product, feature or service, it was only used once and then never again in respect of that product, feature or service.

• The phrase was used as a “rhetorical or dramatic device” rather than as a trade mark to be attached to particular goods or services.

• The phrase has been used only in the sense of its “ordinary meaning”, indicating that the speaker was about to say something else.

• The biography was on the subject of Mr Jobs himself rather than Apple’s goods or services [and presumably was not use of the phrase by Apple in any event, given the biography was unauthorised].

• There was no evidence that anyone from Australia had attended the keynote addresses or that they had been otherwise viewed by anyone from Australia.

Another noteworthy aspect of the decision is the hearing officer’s consideration of evidence consisting of a hyperlink to a video which did not include any associated video footage. The hyperlink was included in the opponent’s evidence-in-support but was broken after the evidence was filed and no longer led to the relevant video. The opponent provided a new hyperlink to another video with the same subject matter in its summary of submissions. However, the hearing officer stated that if the opponent had wanted certainty that the video would be viewed, the opponent should have filed the actual video, preferably as an annexure to its evidence-in-support. The hearing officer considered it doubtful that a hyperlink submitted alone in evidence would actually incorporate the matter to which it was linked, bearing in mind that the matter to which it was linked was not fixed but could change over time. In the end, the hearing officer did take the replacement video into account, although it cannot be assumed that this will occur in all such cases and therefore care should be taken to always include the actual videos, or screenshots of the relevant websites, when including hyperlinks in evidence.