Think different: Apple perde la lite con Swatch sul marchio denominativo , venendo confermata la decadenza per non uso

Il Tribunale UE , confermando la decisione amministrativa EUIPO, con sentenza 08.06.2022, da T-26/21 a T-28/21 ribadisce la decadenza per non uso del marchio denominativo THINK DIFFERENT di Apple (in realtà erano tre i marchi contestati, tutti uguali).

Il caso è regolato ratione temporis dal reg. 207/2009, § 34.

L’appello amministrativo aveva deciso:

<< the Fourth Board of Appeal dismissed the appeals. In particular, first of all, it found that, the first contested mark having been registered on 6 September 1999, the second contested mark on 18 November 1999, the third contested mark on 8 May 2006 and the three applications for revocation having been filed on 14 October 2016, the applicant had to furnish proof of genuine use of those marks in the European Union during the five years preceding that date, that is to say, from 14 October 2011 to 13 October 2016. Next, it observed that the applicant distinguished two periods of use of the contested marks, namely, first, the use of the contested marks in a marketing campaign from 1997 to 2000 for iMac computers and, second, the use on the box packaging of iMac computers since 2009, and throughout the relevant period. With regard to the first period, it noted that the marketing campaign predated the relevant period by more than 10 years and could not therefore be taken into account. Moreover, the occasional use of the contested marks on the applicant’s website during the relevant period to commemorate famous people or special events was an isolated and ephemeral use. With regard to the second period, the Board of Appeal, after having specified that the evidence submitted by the applicant related only to computers and computer peripherals in Class 9, found that proof of genuine use of the contested marks for those goods had not been provided, since the images provided showed use of the contested marks in a single place on the box packaging, in rather small script next to the list of technical specifications. It added that, in view of the highly technical nature of the goods concerned as well as the length of the text on the packaging of the iMac computers, written in small letters, the relevant public would perceive the elements ‘think different’ as a promotional message inviting it to think differently, in other words, to ‘think outside the box’. Last, the Board of Appeal reached that conclusion without considering it necessary to assess whether the worldwide sales figures for iMac computers since 2009 were sufficient to demonstrate genuine use of the contested marks.>>, § 20.

Premesse le solite considerazioni generali, §§ 58-66, il T. rifiuta le dichiarazioni sulle vendite in quanto di parte e non provenienti da soggtto terzo, § 76 ss

Dice che è leigttimo considerare non sufficiente l’uso del segno che segua una serie di dettagli tecnici , collocati sul packaging, §§ 86-90

Inoltre nemmeno può essere considerato uso del segno , dato che era usato a fianco del  ben  più noto <macintosh>:

<<In the present case, as the photographs of the iMac computer packaging in the file illustrate, the word elements ‘think different’ do not appear on the labels affixed to the box packaging in a way which particularly draws the consumer’s attention. On the contrary, as the Board of Appeal correctly pointed out in paragraph 30 of the contested decisions, those word elements are placed under the technical specifications of the iMac computers, and just above the barcode in a relatively small character size. That expression is, moreover, accompanied by the word ‘macintosh’ of the same size and written in the same font.

94      It must therefore be concluded that the way in which the contested marks are used on iMac computer packaging does not ground the conclusion that they have been used as trade marks, that is to say, in accordance with their essential function of giving an indication of the commercial origin of the goods concerned>>, §§ 93-94

<< 95  By contrast, in the present cases, the expression ‘think different’ of the contested marks appears simply after a long list describing the technical specifications of the iMac product. In addition, it should be noted that the judgment of 30 November 2009, COLORIS (T‑353/07, not published, EU:T:2009:475) arose out of a context different from that of the present case, in that the term ‘coloris’, appearing on the labels to be affixed to metallic cans for colorants, was significantly larger than that of the other word elements. Last, unlike the present case, in the judgment of 15 December 2016, ALDIANO (T‑391/15, not published, EU:T:2016:741, paragraph 31), the earlier mark, which also constituted the applicant’s company name, was affixed to the packaging of the alcoholic beverages at issue. Moreover, the factual context of those three cases was different from that of the present case, in so far as it concerned products which were very different from the technological products in the present case, namely cosmetics, paint products and alcoholic beverages, sold in different shops and for a substantially lower amount>>.

iNOLTRE, l’Ufficio aveva trovato << that those marks, combined with the Macintosh mark, would be understood as a promotional message inviting consumers to think differently, in other words, to ‘think outside the box’. In paragraph 33 of those contested decisions, it stated that the inherent distinctiveness of the contested marks and hence its ability to perform the essential function of a mark – that of identifying the origin of the goods concerned – must be considered to be rather weak, which renders it even less plausible that English-speaking consumers will attribute to it a trade mark function>>, § 96

Istruzioni importanti per gli operatori (imprese e agenzia pubblicitarie e di comunciaizone) e per i loro consulenti giuridici circa le modalità di inserimento del segno nella progettazione dell’aspetto visivo del prodotto o del suo packaging.