England and Wales High Court (Chancery Division) Decisions

IN THE HIGH COURT OF JUSTICE
CHANCERY DIVISION

		Rolls Building Fetter Lane, London, EC4A 1NL
		10 March 2017

MR JUSTICE ARNOLD :

Introduction

1. On 18 March 2014 Brightflash USA LLC ("Brightflash") applied to register the word IWATCH as a trade mark in respect of goods in Classes 9 and 14. Following examination, the application was refused in respect of all the goods in Class 14 on the grounds that it was descriptive or devoid of distinctive character, but accepted for all the goods in Class 9. On 12 September 2014 Arcadia Trading Ltd ("Arcadia") opposed the application to register the trade mark in Class 9 on the grounds that it was descriptive or devoid of distinctive character. On 15 October 2015 Brightflash assigned the application to Apple Inc ("Apple"). Subsequently, Arcadia was permitted to amend its grounds of opposition to allege that the application had been made in bad faith.
2. In a written decision dated 30 August 2016 (O/412/16) Mark King acting for the Registrar of Trade Marks rejected Arcadia's allegation that the application had been made in bad faith, but accepted its case that the trade mark was descriptive in respect of some of the goods in the Class 9 specification although not all of those goods. Accordingly, he upheld the opposition and refused the application in relation to the following goods:

"Computer software; computers; monitors and monitoring devices; computer hardware; wireless communication devices; audio and video devices; global positioning system devices; accessories, parts, components, and cases for all of the foregoing goods."

3. The hearing officer rejected the opposition and permitted the application to proceed to registration in relation to the following goods:

"Security devices; cameras; computer peripherals; radios; accessories, parts, components, and cases for all of the foregoing goods."

4. Apple has appealed against the hearing officer's decision that the trade mark is descriptive in respect of the goods set out in paragraph 2 above. Arcadia has not cross-appealed with respect to the goods set out in paragraph 3 above.

The hearing officer's decision

5. The hearing officer's decision may be summarised for the purposes of this appeal as follows. First, he directed himself as to the principles to be applied under section 3(1)(c) of the Trade Marks Act 1994, which implements Article 3(1)(c) of European Parliament and Council Directive 2008/95/EC of 22 October 2008 to approximate the laws of the Member States relating to trade marks (codified version) ("the Directive"), in accordance with my judgment in Starbucks (HK) Ltd v British Sky Broadcasting Group plc [2012] EWHC 3074 (Ch), [2013] FSR 29 at [91]-[92] (affd [2013] EWCA Civ 1465, [2014] FSR 20).
6. Secondly, he held that the specification of goods applied for covered what he described in some places as "smart phones in the shape of a watch" and in other places as "smart watches" for the reasons he set out in the following passages in his decision:

"23. Within [exhibit TM1] is a print out from 'TMClass' which is an official database of acceptable terms for describing goods and services. The print out states that class 9 includes the term 'smartphones in the shape of a watch'. The exhibit also appears to demonstrate the existence of smart watches and wearable computers which are essentially devices worn by individuals which combine the practicality of watches with smart functions, such as providing access to the internet and related applications. There is also a definition of 'What is smartwatch' from WhatIs.com. It defines 'smartwatch' as 'A smartwatch is a wearable computing device that closely resembles a wristwatch or other time-keeping device'. From my own knowledge these are goods which are known and used in the marketplace.

…

25. The same exhibit includes numerous references to 'wearable computers' which generally defines them as a device or equipment that can be worn by a user, for example clothes, watches, glasses, etc. The copy of an entry in Wikipedia provides a history of 'wearable computers' and it includes the statement 'In the late 2000s, various Chinese companies began producing mobile phones in the form of wristwatches, the descendants of which as of 2013 include the i5 and i6, which are GSM phones with 1.8 inch displays, and the ZGPAX s5 Android wristwatch phone'. Apart from the date it was printed (16 February 2015) the document is not dated, though it does discuss events prior to the relevant date. The WhatIs.com website defines a wearable computer as 'an electronic device capable of storing and processing data that is incorporated into a person's clothing or personal accessories'. The Webopedia definition for a wearable computing specifically states that it is 'A term that refers to computer-powered devices or equipment that can be worn by a user, including clothing, watches, glasses, shoes and similar items.' Further, Whatis.com defines a smartwatch as 'a wearable computing device that closely resembles a wristwatch or other time-keeping device'.

…

51. At this point it is worth noting that 'watches' per se are covered by class 14, and the application was refused for such goods. However, the application also covers broad class 9 terms, some of which cover the referred to 'smartphones in the shape of a watch'. …

52. It is clear from the evidence that smart watches (or wearable computers) do not just display the time, as per your everyday watch, but they also provide access to the internet, applications and generally all of the same functions as a smart phone. On this basis, I consider smart watches to have duel [sic] functionality, i.e. they are a watch and a phone that has internet functionality. A similar commonly used example of an item that may be classified in either of class 9 or 14 is a clock/radio or radio/clock. As evidenced by Mr Meadows, class 9 includes terms such as 'smartphones in the shape of a watch'. This would be covered by the broader term 'computers; computer hardware; wireless communication devices; audio and video devices'. I do not consider the remaining goods will cover smart phones, which could be shaped as a watch"

7. Thirdly, he held that the mark was descriptive for such goods for the reasons he set out at [56]:

"In my view, the existing guidance and the position outlined by the GC indicate that the prefix 'I' would most likely be viewed as 'internet', which when used in conjunction with the entirely descriptive term 'watch' results in IWATCH being descriptive of a watch-like device with internet connectivity. I note that the applicant has numerous trade mark registrations, and enjoys considerable success with 'I' prefixed marks, but it is clear from the evidence that other third parties also use the 'I' prefix. Therefore, I find that the sign IWATCH describes a characteristic of the goods, i.e. smart watches which may access the internet, have some form of interactive functionality or be a smart watch which has some health checking function (i.e. monitors and monitoring devices)."

8. Fourthly, he held that the objection also applied to "computer software" because such goods were so closely connected to smart watches that the trade mark was also descriptive of them, applying the reasoning of Geoffrey Hobbs QC sitting as the Appointed Person in FOURNEAUX DE FRANCE Trade Mark (O/240/02).
9. Lastly, he held that Apple had not established that the mark had acquired distinctiveness as a result of its use of a number of I-prefixed marks for reasons he gave at [59]:

"Section 3(1) of the Act states (emphasised [sic] added) that where a mark 'has in fact acquired a distinctive character as a result of the use made of it.' Use of other marks (in this instance iPad, iPhone, etc.) with the same prefix as the mark may reduce the length of time that the new mark takes to acquire a distinctive character, but it is difficult to see how use of marks with a different overall distinctive character, such as iPOD, iPAD etc, can amount to use of IWATCH for the purposes of the proviso to s.3(1). Further, even if that is wrong, the evidence indicates that the presentation of the letter i as a lower case letter followed by a capital letter is part of what identifies the applicant's existing family of marks. By contrast, the mark applied for would give the applicant an exclusive right to IWATCH in any normal form of use."

Grounds of appeal

10. Apple's grounds of appeal may be summarised as follows:

i) the hearing officer was wrong to hold that the Class 9 specification covered smartphones in the shape of a watch or smart watches;

ii) the hearing officer was wrong to hold that the trade mark was descriptive for computer software; and

iii) the hearing officer was wrong to reject Apple's case of acquired distinctiveness.

Standard of review

11. The principles applicable on an appeal from the Registrar of Trade Mark were recently considered in detail by Daniel Alexander QC sitting as the Appointed Person in TT Education Ltd v Pie Corbett Consultancy Ltd (O/017/17) at [14]-[52]. Neither party took issue with his summary at [52], which is equally applicable in this jurisdiction:

"(i) Appeals to the Appointed Person are limited to a review of the decision of Registrar (CPR 52.11). The Appointed Person will overturn a decision of the Registrar if, but only if, it is wrong (Patents Act 1977, CPR 52.11).

(ii) The approach required depends on the nature of decision in question (REEF). There is spectrum of appropriate respect for the Registrar's determination depending on the nature of the decision. At one end of the spectrum are decisions of primary fact reached after an evaluation of oral evidence where credibility is in issue and purely discretionary decisions. Further along the spectrum are multi-factorial decisions often dependent on inferences and an analysis of documentary material (REEF, DuPont).

(iii) In the case of conclusions on primary facts it is only in a rare case, such as where that conclusion was one for which there was no evidence in support, which was based on a misunderstanding of the evidence, or which no reasonable judge could have reached, that the Appointed Person should interfere with it (Re: B and others).

(iv) In the case of a multifactorial assessment or evaluation, the Appointed Person should show a real reluctance, but not the very highest degree of reluctance, to interfere in the absence of a distinct and material error of principle. Special caution is required before overturning such decisions. In particular, where an Appointed Person has doubts as to whether the Registrar was right, he or she should consider with particular care whether the decision really was wrong or whether it is just not one which the appellate court would have made in a situation where reasonable people may differ as to the outcome of such a multifactorial evaluation (REEF, BUD, Fine & Country and others).

(v) Situations where the Registrar's decision will be treated as wrong encompass those in which a decision is (a) unsupportable, (b) simply wrong (c) where the view expressed by the Registrar is one about which the Appointed Person is doubtful but, on balance, concludes was wrong. It is not necessary for the degree of error to be 'clearly' or 'plainly' wrong to warrant appellate interference but mere doubt about the decision will not suffice. However, in the case of a doubtful decision, if and only if, after anxious consideration, the Appointed Person adheres to his or her view that the Registrar's decision was wrong, should the appeal be allowed (Re: B).

(vi) The Appointed Person should not treat a decision as containing an error of principle simply because of a belief that the decision could have been better expressed. Appellate courts should not rush to find misdirections warranting reversal simply because they might have reached a different conclusion on the facts or expressed themselves differently. Moreover, in evaluating the evidence the Appointed Person is entitled to assume, absent good reason to the contrary, that the Registrar has taken all of the evidence into account. (REEF, Henderson and others)."

First ground of appeal

12. Counsel for Apple advanced a number of criticisms of the hearing officer's reasons for concluding that the goods in Class 9 set out in paragraph 2 above covered smart watches.
13. First, he pointed out that the hearing officer's reasoning had started from his reference at [23] to a single page printout from TMClass in exhibit TM1 to the first witness statement of Arcadia' witness Thomas Meadows, whereas the full exhibit ran to 191 pages. This criticism is misconceived. The hearing officer went on to refer to other pages of the exhibit. In any event, the hearing officer was right to concentrate on the most relevant pages of the exhibit.
14. Secondly, counsel for Apple submitted that the printout from TMClass was irrelevant and inadmissible, because it reflected the position under the 11^th edition of the Classification adopted pursuant to the Nice Agreement Concerning the International Classification of Goods and Services for the Purposes of the Registration of Marks ("the Nice Classification"), which is the edition which is currently in force, and not the position under the 10^th edition of the Nice Agreement, which was the edition in force at the relevant time. Thus the 11^th edition specifically includes "smartwatches" in the list of goods in Class 9, whereas the 10^th edition did not. Accordingly, counsel argued, the hearing officer was wrong to conclude that smart watches fell within Class 9 under the 10^th edition.
15. I set out the law with respect to classification in Omega Engineering Inc v Omega SA [2010] EWHC 1211 (Ch), [2010] FSR 26 (affd [2011] EWCA Civ 645, [2011] ETMR 40) at [6]-[27] and explained its application in circumstances such as these at [69]-[72]. For brevity, I will take those passages as read. The key point for present purposes is that, by the time of the 9^th edition of the Nice Classification, a multipurpose product could be classified in more than one class. That has continued to be the position under the 10^th and 11^th editions. In particular, as the hearing officer correctly stated at [52], a product such as a clock/radio is proper to both Class 9 and Class 14 even though clocks, watches and other chronometric instruments are specifically excluded from Class 9.
16. The fact that "smartwatches" were not specifically included in the list of goods in Class 9 in the 10^th edition is immaterial. In those circumstances, it fell to the hearing officer to determine the correct classification of such goods in accordance with the 10^th edition. He determined that they had a dual functionality and were proper to Class 9 as well as Class 14. In my judgment he was plainly correct. In any event, as counsel for Arcadia pointed out, the hearing officer's determination on this point is final and cannot be challenged in proceedings such as these: see section 34(2) of the 1994 Act, Omega v Omega at [71] and Red Bull GmbH v Potters Ltd [2013] RPC 13 at [13]-[22] (Geoffrey Hobbs QC sitting as the Appointed Person).
17. Thirdly, counsel for Apple pointed out that neither the expression "smartphones in the shape of a watch" nor the term "smart watch" appeared in the specification of goods in Class 9 in the application and argued that the hearing officer was wrong to proceed on the basis that the broad terms of the specification of goods set out in paragraph 2 above covered such goods.
18. This argument is legally erroneous. It is well established that, in order for a trade mark to be registrable in respect of a category of goods, it must be free from objection on absolute or relative grounds with respect to any goods falling with that category. If authority is needed for this proposition, it is sufficient to refer to one cited by counsel for Apple himself, Case T-133/05 Meric v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2006] ECR II-2739 at [29]:

"In addition, the goods can be considered as identical when the goods designated by the earlier mark are included in a more general category, designated by the trade mark application (Case T-388/00 Institut für Lernsysteme v OHIM – Educational Services (ELS) [2002] ECR II-4301, paragraph 53) or when the goods designated by the trade mark application are included in a more general category designated by the earlier mark (Case T-104/01 Oberhauser v OHIM – Petit Liberto (Fifties) [2002] ECR II-4359, paragraphs 32 and 33; Case T-110/01 Vedial v OHIM – France Distribution (HUBERT) [2002] ECR II-5275, paragraphs 43 and 44; and Case T-10/03 Koubi v OHIM – Flabesa (CONFORFLEX) [2004] ECR II-719, paragraphs 41 and 42)."

Although this statement is concerned with objections on relative grounds, the same principle applies to objections on absolute grounds.

19. Fourthly, counsel for Apple also argued that the hearing officer had made the mistake of construing the specification of goods by reference to Apple's commercial intentions with respect to goods bearing the trade mark. But the hearing officer did no such thing. He simply noted that the Class 9 specification contained a number of terms which were very broad and held that they embraced smart watches. In my judgment he was plainly right about this.
20. Accordingly, I reject Apple's first ground of appeal. I would add that, as counsel for Arcadia pointed out, in principle it would have been open to Apple to try to devise a more restricted specification of goods that excluded smart watches; but Apple made no attempt to do so either before the hearing officer or on appeal.

Second ground of appeal

21. Counsel for Apple submitted that the reasoning of Mr Hobbs in the FOURNEAUX DE FRANCE case was inapplicable to the present case. In that case Mr Hobbs found that the trade mark FOURNEAUX DE FRANCE, which translates as "cookers from France", was objectionable under section 3(1)(c) as describing cookers (from France). The next question was whether cooker hoods and extractor fans "should be treated as goods so closely related to cookers as to be an integral part of the commercial context in which the meaning and significance of the words FOURNEAUX DE FRANCE is to be regarded as essentially descriptive." Mr Hobbs concluded that they were. Counsel argued that computer software was not so closely connected to smart watches as to make the trade mark IWATCH descriptive of computer software.
22. I do not accept this argument. Smart watches depend for their operation on the computer software they incorporate. Accordingly, I consider that the hearing officer was correct to conclude that the trade mark was descriptive of computer software, and specifically computer software incorporated in smart watches. Certainly I do not accept that the hearing officer made any error which would justify this court in overturning this aspect of his decision. I therefore reject Apple's second ground of appeal.

Third ground of appeal

23. Counsel for Arcadia submitted that it was not open to Apple to rely upon acquired distinctiveness since no such case was advanced in its Amended Counterstatement. The hearing officer interpreted Apple's Amended Counterstatement as pleading "in effect a claim to acquired distinctiveness by virtue of the use made of other marks", however, and Arcadia served no Respondent's Notice challenging that conclusion.
24. Counsel for Apple submitted that the hearing officer was wrong to hold that, as a matter of law, a trade mark (here IWATCH) could not acquire distinctive character as a result of the use of different trade marks (such as IPHONE and IPAD) which shared a feature with the first trade mark (here the I- prefix). This submission raises an issue as to the proper interpretation of the proviso to section 3(1) of the 1994 Act, which in turn raises an issue as to the proper interpretation of Article 3(3) of the Directive.
25. As the hearing officer noted, a literal interpretation of the words of the proviso to section 3(1) leads to the conclusion that one trade mark cannot acquire distinctive character as a result of use of different trade marks because it refers to distinctive character acquired "as a result of the use made of it". Similarly, Article 3(3) refers to distinctive character acquired "following the use which had been made of it". It is well established, however, that provisions in European Union directives are not to be interpreted purely literally, but having regard to the context of those provisions and the objectives of the legislation of which they form part.
26. Counsel for Apple relied upon three main authorities as establishing that the hearing officer was wrong to interpret the legislation in the way that he did.
27. First, he relied upon judgment of the Court of Justice of the European Union in Case C-353 Société des Produits Nestlé SA v Mars UK Ltd [2005] ECR I-6135, in which the Court of Justice held at [30]:

"Yet, such identification, and thus acquisition of distinctive character, may be as a result both of the use, as part of a registered trade mark, of a component thereof and of the use of a separate mark in conjunction with a registered trade mark. In both cases it is sufficient that, in consequence of such use, the relevant class of persons actually perceive the product or service, designated exclusively by the mark applied for, as originating from a given undertaking."

28. In my judgment this authority does not begin to demonstrate that the hearing officer's interpretation of Article 3(3) is wrong. As can be seen from the passage cited, what the Court of Justice held was that a trade mark could acquire distinctive character through use of that trade mark either as part of a larger trade mark or in conjunction with another trade mark. This does not require Article 3(3) to be interpreted otherwise than in accordance with its wording. Nor does it follow that a trade mark can acquire distinctive character as a result of the use of different trade marks with a shared feature.
29. Secondly, counsel for Apple relied upon the judgment of the CJEU in Case C-234/06 P Il Ponte Finanziaria SpA v Office for Harmonisation in the Internal Market (Trade Marks and Designs) [2007] ECR I-7367, in which the Court of Justice held as follows:

"62. While it is true that, in the case of opposition to an application for registration of a Community trade mark based on the existence of only one earlier trade mark that is not yet subject to an obligation of use, the assessment of the likelihood of confusion is to be carried out by comparing the two marks as they were registered, the same does not apply where the opposition is based on the existence of several trade marks possessing common characteristics which make it possible for them to be regarded as part of a 'family' or 'series' of marks.

63.      The risk that the public might believe that the goods or services in question come from the same undertaking or, as the case may be, from economically-linked undertakings, constitutes a likelihood of confusion within the meaning of Article 8(1)(b) of Regulation No 40/94 (see Alcon v OHIM, paragraph 55, and, to that effect, Canon, paragraph 29). Where there is a 'family' or 'series' of trade marks, the likelihood of confusion results more specifically from the possibility that the consumer may be mistaken as to the provenance or origin of goods or services covered by the trade mark applied for or considers erroneously that that trade mark is part of that family or series of marks.

64.       As the Advocate General stated at paragraph 101 of her Opinion, no consumer can be expected, in the absence of use of a sufficient number of trade marks capable of constituting a family or a series, to detect a common element in such a family or series and/or to associate with that family or series another trade mark containing the same common element. Accordingly, in order for there to be a likelihood that the public may be mistaken as to whether the trade mark applied for belongs to a 'family' or 'series', the earlier trade marks which are part of that 'family' or 'series' must be present on the market.

65.      Thus, contrary to what the appellant maintains, the Court of First Instance did not require proof of use as such of the earlier trade marks but only of use of a sufficient number of them as to be capable of constituting a family or series of trade marks and therefore of demonstrating that such a family or series exists for the purposes of the assessment of the likelihood of confusion."

30. In my judgment this passage does not demonstrate that the hearing officer's interpretation of Article 3(3) is wrong either. What it demonstrates is that a likelihood of (indirect) confusion can arise where one party uses a family or series of distinctive trade marks with a common element and another party proposes to use another distinctive trade mark which shares that common element and thus may be perceived by the average consumer as being another member of the same family or series. It does not necessarily follow that a trade mark which lacks inherent distinctive character can acquire distinctive character as a result of the use of different trade marks with a common feature.
31. Thirdly, and most relevantly, counsel for Apple relied upon the recent judgment of the General Court in Case T-518/13 Future Enterprises Pte Ltd v European Union Intellectual Property Office [EU:T:2016:389], [2016] ETMR 41. In that case McDonald's sought a declaration of invalidity in respect of a registration of the word MACCOFFEE in relation to goods in Classes 29, 30 and 32, relying upon a number of Mc-prefixed earlier trade marks, including McCHICKEN, McFISH, McMUFFIN and McTOAST, registered in the same or similar classes, as well its McDONALD'S mark. The contested trade mark was declared invalid by the Cancellation Division on the ground that it took unfair advantage of the reputation of the McDONALD'S mark. The Board of Appeal dismissed the proprietor's appeal. The proprietor's further appeal to the General Court was also dismissed.
32. One of the issues on the appeal to the General Court was whether the existence of a family of Mc-prefixed marks was a relevant factor to the assessment of whether the relevant public would make a link between MACCOFFEE and McDONALD'S. The General Court held that, in order for this to be relevant, McDonald's had to provide evidence of the actual use of a sufficient number of earlier trade marks to constitute a family. It went to conclude that the Board of Appeal was right to find that sufficient evidence of this had been provided. In that context the General Court stated at [59]:

"Moreover, as correctly observed by the Board of Appeal in paragraph 59 of the contested decision, the courts in Germany, Spain, Sweden and the United Kingdom found, during the relevant periods, that the prefix 'mc', combined with another word, had acquired its own distinctive character for fast-food services and goods on the menu of fast-food establishments. While EUIPO is not bound by decisions made by the authorities in the Member States and while, in so far as the application of EU trademark law is independent of any national system, the legality of EUIPO decisions cannot be called into question solely on the basis of assessments contained in earlier national decisions, those decisions may nevertheless be taken into consideration by EUIPO, as indicia, in the context of its assessment of the facts of the case (see, to that effect, judgments of 21 April 2004 in Concept v OHIM (ECA), T-127/02, EU:T:2004:110, paragraphs 70 and 71; of 9 July 2008 in Reber v OHIM — Chocoladefabriken Lindt & Sprüngli (Mozart), T-304/06, EU:T:2008:268, paragraph 45; and of 25 October 2012 in riha v OHIM — Lidl Stiftung (VITAL&FIT), T-552/10, not published, EU:T:2012:576, paragraph 66). Thus, contrary to what the applicant claims, the Board of Appeal could, for purposes of its own assessment of the facts of the case, take into account in the contested decision, as indicia, the findings made by the national courts during the relevant periods, from which it was clear that, in the territory covered by their competence, the use of the prefix 'mc', combined with another word, was such that it enabled it to acquire its own distinctive character for fast-food restaurant services and the goods on the menu of fast-food establishments."

33. This statement has to be understood in the particular legal and factual context in which it was made. It was again concerned with the situation where one party uses a family or series of distinctive trade marks with a common element and another party proposes to use another distinctive trade mark which shares that common element. In that case, the focus of the enquiry was upon the possibility that the average consumer might perceive a link between the later trade mark and the earlier family or series of trade marks (association) rather than upon the possibility that the average consumer might think that the later trade mark was another member of that family or series (indirect confusion), but the essential nature of the enquiry was the same. In that context, the General Court held that it was permissible to have regard to findings that the relevant public had come to recognise trade marks having the form Mc- plus another word as denoting goods and services emanating from McDonald's. Although the General Court talked about the prefix Mc- having "acquired its own distinctive character", the prefix was not descriptive of any characteristics of the goods or services in question. Nor were any of the relevant trade marks, including the contested trade mark, viewed as a whole. It does not necessarily follow that a trade mark which is descriptive (or otherwise lacks distinctive character) can acquire distinctive character as a result of the use of other trade marks with which it shares a common feature.
34. I conclude that none of the authorities relied upon by counsel for Apple demonstrates that the hearing officer's interpretation of Article 3(3) is wrong. I am conscious, however, that I did not receive the fullest of arguments from either side on this point. In particular, neither counsel offered any analysis of the context and purpose of Article 3(3), nor was I referred to any academic commentary on the question. I am therefore reluctant to express a concluded view on the matter unless it is necessary to do so. For the reasons given below, I do not consider that it is.
35. Even assuming that the hearing officer was wrong to conclude that IWATCH could not acquire distinctive character as a result of the use of trade marks such as IPHONE and IPAD as a matter of law, he did not rest his decision on that point alone. He went on to conclude that Apple had not established that IWATCH had acquired a distinctive character on the facts in any event. In order to succeed on this appeal, Apple must show that that conclusion was wrong. In my judgment Apple has not done so. The starting point is that the hearing officer held that both the I-prefix and the -WATCH suffix were descriptive, as was the combination of the two. As the hearing officer noted, the use relied upon by Apple was of other marks in the form "iPhone", "iPad", "iPod" and "iTunes". I agree with him that it does not follow that the average consumer would perceive the trade mark IWATCH presented, for example, in the form "Iwatch" as denoting goods from the same source. Furthermore, as the hearing officer had already found (including at [56] quoted in paragraph 7 above), there was evidence of third-party use of i-prefixed trade marks, such as the iPlayer trade mark used by the BBC (a number of other instances were referred to by the hearing officer at [24]). In those circumstances, I consider that the hearing officer was fully entitled to conclude that IWATCH had not acquired a distinctive character in relation to smart watches.

Conclusion

36. For the reasons given above, the appeal is dismissed.