A New Trademark Bite at the Apple
Apple is seeking to expand its trademark protection by registering a trademark for the actual shape of an apple depicted in black-and-white. While the shape of an apple is considered generic and freely usable for certain goods like fruits and produce, Apple argues that for other products, the shape is distinctive and arbitrary, making it eligible for trademark registration. However, this raises some important questions and concerns.
When a trademark is registered, the owner gains the exclusive right to use the trademark and can prevent others from using a similar or confusingly similar trademark. Registering the depiction of an apple could potentially grant Apple extensive protection over the use of that image as a trademark. The issue at hand is whether this level of protection is appropriate or if it becomes overly broad.
A trademark serves as a symbol that distinguishes the goods or services of one entity from those of others. The criteria and tests used to determine whether one trademark infringes on another may vary between countries, although some universal principles apply.
It is important to note that not all trademarks that bear similarities to a registered trademark automatically infringe upon it. The determination of infringement depends on the specific goods or services associated with the alleged infringing trademark and the marketing channels that are used. For instance, a trademark that is registered for food and beverage trademark would not be infringed by the use a similar trademark for car parts or furniture.
To assess infringement, an examination should be carried out on whether the alleged infringing trademark can be distinguished from the registered one or if, rather, there is a likelihood of confusion between the two. This analysis involves evaluating the overall impression, design elements, colors, fonts, and any textual or visual elements that could create confusion.
In the case of a registered well-known (or famous) trademark, the scope of protection is broader and extends beyond the goods or services for which the trademark is registered. For example, a manufacturer of household furniture would be prohibited from using the trademark “Google” for beds, even if that trademark is not specifically registered for furniture. Similarly, a car manufacturer cannot use the trademark “Coca Cola” for a new car model.
Apple is undoubtedly a well-known trademark, and this fame may also extend to the apple depiction it has registered or is in the process of registering in many countries. Such registration could potentially block others from using an apple depiction in various fields, including food, beverages, fruit produce, and others.
In Switzerland, the Swiss Institute of Intellectual Property (IPI) granted registration of this trademark for some of the goods and services Apple intended to use it for but refused registration for others. The refusal was based on the argument that generic images of common goods, such as apples, should generally remain in the public domain. For instance, the logo of the Fruit Union Suisse, an organization of Swiss apple growers with a 111-year history, and that today represents approximately 8,000 apple farmers, features an apple image with a white cross.
Apple has appealed this IPI decision.
In other countries, such as Israel, the trademark was registered with lesser objection.
The outcome of this case remains to be seen as it continues to develop.