Neutral Citation Number: [2021] EWHC 719 (Ch)

Appeal no CH-2017-000272
IN THE HIGH COURT OF JUSTICE
BUSINESS AND PROPERTY COURTS OF ENGLAND AND WALES
INTELLECTUAL PROPERTY LIST (ChD)
ON APPEAL FROM THE REGISTRAR OF TRADE MARKS

Rolls Building
Fetter Lane
London, EC4A 1NL
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29 March 2021

Before :

MR IAIN PURVIS QC
Sitting as a Deputy Judge of the High Court
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Between :

SWATCH AG Appellant

- and -

APPLE INC Respondent

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Jonathan Moss (instructed by Haseltine Lake Kempner LLP) for the Appellant
Charlotte May QC and Jaani Riordan (instructed by Locke Lord LLP) for the Respondent

Hearing date: 12 March 2021

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JUDGMENT
 Iain Purvis QC, sitting as a Deputy Judge of the High Court:

INTRODUCTION

1. This is an Appeal from a decision of the Hearing Officer, Oliver Morris, acting
on behalf of the Registrar of Trade Marks in Oppositions
brought by the Respondent under numbers 406449 and 406479. The
Decision was made on 19 October 2017. The remarkable delay between the
Decision and the hearing of this Appeal is partially due to a protracted
application for an extension of time for permission to Appeal, initially refused
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in the High Court and then permitted by consent in the Court of Appeal. This
process took around a year. The remainder of the delay seems to have been due
to stays agreed between the parties for the purpose of settlement. A further stay
for the same purpose was sought from me on the eve of the date fixed for this
Appeal, at which time I was told that the matter was near to settlement. Given
the history of the matter, and the previous lack of success of settlement
discussions, I granted an adjournment of 48 hours (to the end of the 3-day
window fixed for the Appeal) to enable the parties to finalise their settlement.
No settlement was reached in time (nor has yet been reached) and the Appeal
therefore went ahead.

THE TRADE MARK APPLICATIONS AND THE GROUNDS OF

OPPOSITION

2. The Trade Mark Applications in suit are International Registrations which

designated the UK . They are numbered
1281231 and 1281232 and are for the following signs, respectively:

SWATCH ONE MORE THING

ONE MORE THING

3. The Applications were made in classes 9 and 14 for a wide range of goods
including watches and consumer electronic products.

4. The Oppositions were made by Apple under s5(4)(a) and s3(6) of the Trade
Marks Act 1994. The s5(4)(a) objection contended that the use of the mark
could be prevented by Apple under the law of passing off by reason of the
goodwill which Apple had acquired in connection with the phrase ONE MORE
THING. The s3(6) objection contended (at a broad level) that the application
was made in bad faith having regard to
reputation in the phrase, the circumstances in which the marks were applied for
marks.

5. The phrase has been used at launches of Apple products since 1998 in the
following way. The well-known Chairman and founder of Apple, Steve Jobs,
 48. For those reasons I consider that the Hearing Officer was wrong to hold that
Swatch intended to make use of the mark to poke fun at Apple in a manner akin
to parody.

49. I have considered whether the simple fact that Swatch were motivated by a
desire to annoy Apple could be sufficient to amount to bad faith. I do not think
it can. Annoyance of a business is not a concept which is capable of objective
reference to
suggests something which is economically identifiable. And in any event,

50. This would be sufficient for the Appeal to succeed, but I will also consider the
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third ground argued before me, namely that even a proven intention to
would not be sufficient in itself to amount
to bad faith under s3(6).

51. It will be recalled that the CJEU in SkyKick at [75] referred to bad faith as
applying where the Applicant has

aim of engaging fairly in competition but with the intention of

undermining, in a manner inconsistent with honest practices,

52. Pokin
affectionate teasing to full-frontal attacks. I do not consider that it is an
inherently dishonest business practice to use a sign which brings another trader
to the mind of some consumers in an amusing but inoffensive way. Such an
activity would not necessarily undermine the interests of the third party in any
material way. The point at which parodic or humorous activity of that kind
would transgress the boundaries of honest business practices must depend on
the nature of the humour, the intensity of its use and its consequent impact on
the business interests of the recipient.

53. One can imagine cases in which a mark is inherently offensively parodic, so that
any use of it must inevitably transgress honest business practices and unfairly
undermine the interests of the subject of the parody. However, where (as here)
the mark itself is not offensive, it is hard to see how the mere prospect that it
might be put to some parodic use which overstepped the mark provides a
ground for refusal under s3(6). This is because (i) the making of the Application
is equally consistent with the proprietor acting in good faith, so a finding of bad
faith would contravene the proposition of Arnold J in [133] of Red Bull (see
[40] above), and (ii) the Court would be essentially engaging in speculation,
contrary to Ian Adam (also [40] above).

54. This argument was dismissed by the Hearing Officer in the passage from [61] of
his Decision which I have quoted above. I disagree with his analysis. Taking the
points he makes in order:

(i) The Hearing Officer first refers to the applications being to

support a
 only poke fun at but may also denigrate the subject of such
parody) I have some difficulty with this passage for two
reasons.

a. The words and in this passage

suggest speculation and immediately run into
difficulties with the propositions in [133] of Red Bull
(see [40] above).

b. An intent to is not one which was pleaded

(although perhaps it was
characterisation at the Hearing, which used the word
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). More importantly, the Hearing Officer had

not found such an intention in his findings of fact in
[60] of his Decision. It will be recalled that [60] simply
found an intention of If the Hearing
Officer had considered that the evidence went beyond
this and established an intention by Swatch to use the
mark to denigrate Apple, then he would have needed to
explain the basis for this. I have to say that it strikes me
that there would be no obvious purpose in Swatch
engaging in such malicious activity, which would be
likely to rebound on its own reputation.

(ii) He then makes the point that using a mark as part of a parody
of another trader is difficult to reconcile with the use of the
marks in accordance with their essential function, of
indicating the commercial source of the goods. But, again, this
must depend on the actual use in question. Using a phrase in a
humorous parodic skit may well not be trade mark use.
However, I do not see why a mark may not have parodic
character whilst at the same time being perfectly capable of
functioning as a trade mark. For example DUNK
DIFFERENT could be a perfectly good trade mark for
biscuits, whilst no doubt conjuring up for some people a wry
or even

(iii) Having noted that the right to publish parodies was an

important aspect of free speech, the Hearing Officer points out
that it is not to obtain exclusive rights to a sign in
order to engage in parody. This seems to me to be addressing

not that his

provided an answer). Rather it was that parody was not an

inherently dishonest business practice.

(iv) The Hearing Officer concludes that

It is the a
exclusive right to engage in this form of
 commercial parody (even, presumably, to

use) which is objectionable.

I find this conclusion hard to follow and somewhat

inconsistent with the rest of the Decision. The exclusive right
granted by a registered trade mark only extends to trade mark

application (see (ii) above) was founded on the assumption

that commercial parody was not trade mark use. The reference
-
parodic) does not make much sense here either, and if
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anything
the Hearing Officer had already held to be not open to Apple
on the pleadings.

55. All in all, it seems to me that the Hearing Officer had no clear idea in mind as to
the kind of parody which Swatch might engage in using this mark. This is not
surprising in itself, since there was no evidence on the point at all. However,
without a clear idea, it was not legitimate
had stepped over the line between the appropriate and inappropriate use of a
trade mark. I should add that at the hearing before me I asked Apple to consider
over the lunchtime adjournment if they could provide some examples of the
kind of parody which they would be concerned Swatch might engage in using
the mark ONE MORE THING. It ultimately declined to do so, saying in essence
that so far as they were concerned any use of the mark by an unauthorised third
party would be offensive and damaging. Whilst Apple was perfectly entitled to
take this approach, it does to my mind illustrate the problems with the Hearing
The Decision is founded on an intention to use a mark in a
particular way which is said to be unfair and would materially undermine
hen no example or illustration of the use in question was
provided.

CONCLUSION

56. I therefore conclude that the Hearing Officer was wrong to uphold the
Opposition under s3(6). The Appeal succeeds.