The Federal Administrative Court in Switzerland recently agreed with the Swiss Intellectual Property Office that Apple's iPhone home button should be refused trade mark registration for a lack of distinctiveness.
Apple Inc. applied to the World Intellectual Property Organisation (WIPO) to register an international trade mark supplying a representation of the home button used on the iPhone. The mark is described as "a black circle with a grey square with rounded corners in the centre" and was applied for in connection with handheld mobile devices.
The Federal Administrative Court held that the fact that the sign was used as part of the product did not demonstrate trade mark use, only that the sign was decorative and functional. The placement of the sign below the screen and in the centre of the phone did not lead customers to perceive the sign as an indication of origin.
Apple tried to overcome the objection by filing evidence to show that the mark had acquired distinctiveness. Apple enjoys a higher market share in Switzerland than across all member states of the EU. However, the evidence filed failed to convince the Court that the mark was sufficiently different from any other home buttons used on a smart phone. The Court held that most of the evidence filed concerned the mark 'APPLE' or 'iPhone'.
The international registration included 19 designations and has been accepted by most trade mark offices including OHIM.
OHIM originally objected on the grounds that the mark lacked distinctive character following third party observations filed by a company called TV Products CZ s.r.o. OHIM agreed with TV Products that the mark used was the same symbol as used by a number of other smart phone providers.
Apple filed evidence of acquired distinctiveness claiming to be the words biggest smart phone vendor having sold over 100 million phone products worldwide by March 2011. OHIM were of the view that the objections raised against the registration were valid but found that the evidence filed was sufficiently convincing to support a finding of acquired distinctiveness.
Apple may appeal the decision in Switzerland. However, it has since changed the home button on the latest incarnation of the iPhone, the iPhone 6. It is expected that the iPhone 7 will eliminate the home button altogether, instead relying on a 3D touch screen.in: Case Law, News, Trade Marks