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In 2011, Apple introduced iMessage, its own messaging service for iOS 5 users (enabling people to send text messages for free with an Internet connection). Since then, it has struggled with IP Offices all around the world to get the trademark registered for its prime activities.

The issue each time revolves around the distinctive character of the trademark – or lack of.

Indeed, the registrability of a sign is directly linked with its ability to distinguish the goods or services of one enterprise from those of other enterprises: i.e. its distinctive character. Without it, the sign fails to fulfil its function as a trademark and cannot be monopolized by one enterprise only.

In the case of iMessage, the sign was often considered to be descriptive of the goods and services the trademark was trying to protect (relating to message services through internet communication) and as such, unable to fulfil its function as a trademark. On this basis, the trademark faced numerous refusals (Switzerland, Croatia, the EU, etc.).

 

The issue was also debated in France and gave rise to an interesting judgment by the Paris Court of Appeal (September 2018), which is a great opportunity to highlight some major points which are necessary to consider when dealing with an allusive trademark:

* Apple filed the French trademark IMESSAGE, notably for software, telecommunications, electronic messages services, representing the core of their activities:

* The trademark was rejected for these goods and services, on the basis that:

  • The French consumer would tend to pronounce the sign as “e-message”, making the reference to electronic message immediate and obvious. As such, the trademark is deprived of any inherent distinctive character.
  • The decision goes a little further: Apple tried to convince the French Office that through the use of the sign as a trademark, IMESSAGE had acquired an enhanced distinctive character, enabling its registration.

However, this argument didn’t work either with the Office: enhanced distinctiveness by virtue of use requires the distinctive character to have already been acquired by the time the trademark application is filed. In this case, IMESSAGE was presented to the public on June 6th, 2011, and the trademark filed on June 27th of the same year, i.e. 3 weeks later. The Office found that most of the evidence provided by Apple were dated past the filing date, and thus, inadmissible.

 

* Apple filed an appeal – however, the judges of the Paris Court of Appeal confirmed the reasoning of the French Office (and thus the partial refusal of the trademark), and added that:

 

  • The notion of brand family – assuming that such a notion can be admitted in the proceeding – is not relevant to the case. Indeed, although Apple tried to put forward their other trademark (IPAD, IPOD, IPHONE, etc.) to showcase the reputation of their “i” brands, the judges found that part of these trademarks actually begin with a low-case “i” and not a capital “I”, unlike IMESSAGE. Consequently, one cannot conclude that the consumer will identify the goods and services as originating from Apple.

The choice of this trademark is the natural follow-up of Apple’s longstanding strategy and capitalization (iPad, iPod, iPhone, iMac, etc.) and as such a natural development.

However, on a legal perspective, this case can serve as a cautionary tale on three points:

* THE CHOICE OF THE SIGN: Especially when dealing with an allusive trademark, precautions have to be taken. Something as simple as the choice between a low-case “i” and a capital “I” can make a difference sometimes: the devil is in the detail;

* THE TIME OF THE FILING: Once again, this is all the more important for less distinctive trademarks. As the acquisition of distinctive character through use requires the distinctive character to have already been acquired by the time the trademark application is filed, it can be interesting to postpone the filing of the trademark, to give it some time to grow.

* THE MANAGEMENT OF THE PROOF: Part of the evidence that Apple submitted was outside of the timeframe or figuring the trademark iMessage instead of IMESSAGE. Offices around the world, and notably in the EU, are more and more severe when it comes to proof of use (see for instance the Big Mac case).

More and more firms choose allusive trademarks, especially when starting a business, because they have compelling features (immediately understood by the public, less expenses on communications, etc.). In these cases more than ever, legal precautions have to be taken to assist and support the project throughout its development with the proper measures.

Our firm remains at your disposal to discuss your trademark strategy and protection.

Selma Ferfera & Laura Momal, IP lawyers @INLEX IP EXPERTISE
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