The case: Apple was proud of its Macintosh computers, and in 1997 it therefore coined the slogan

The tagline has been registered as a trade mark worldwide, including in the European Union, for personal computers and computer accessories. It’s stated aim is ‘celebrating the extraordinary’.

THINK DIFFERENT became world famous. The slogan won not only the Emmy Award 1998 for outstanding advertising, but many other prizes besides. It was also the subject of a worldwide image campaign featuring many famous personalities, such as John Lennon, Nelson Mandela, Albert Einstein, Martin Luther King, Mahatma Gandhi, etc.

Apple was not pleased, however, when in 2015 Swiss watchmaker SWATCH AG launched two European brands called

 for watches – but also for computers. And SWATCH also used the phrase directly on one of its watches:

Unsurprisingly, Apple filed oppositions against Swatch’s trade mark applications based on three registered THINK DIFFERENT trademarks and invoked its earlier trade mark rights. But SWATCH put up a formidable fight, demanding before the EUIPO the revocation, for non-use, of all three Apple trade marks for computers and computer accessories.

Now Apple had to prove genuine use of its trade marks, and this would have to be demonstrated in the last five years before the revocation applications were filed.

Still, Apple had confidence in its case. It referred primarily to the consistent labelling of its iMac computers with THINK DIFFERENT as a trade mark and to the widespread recognition of this trademark. Photos of the packaging of these computers were presented as proof:

THINK DIFFERENT was printed on the top of the packaging, with the specific part being marked with the red arrow in the above photos. An enlargement of this text shows the specific use of the mark in more detail:

Did this constitute a form of genuine use sufficient to keep the trade mark valid? And did this use indicate the origin of the computers as being from Apple?

It was argued that THINK DIFFERENT could only be perceived as a mere advertising slogan. The tagline in fact contains an invitation to consumers to think differently, to think outside the box and to perceive solutions that go beyond those of the mainstream.

To counteract such a purely promotional understanding, Apple needed to have clearly emphasised its sign as an indication of origin. Only then could the tagline have been understood as an indication of the origin of Apple computers. Was this the case?

On the packaging, the slogan was only used in connection with a long, plain, small-print text for highly technical and innovative goods next to the barcode. It occupied an insignificant space in relation to the size of the packaging. Only the iMac brand or device was clearly highlighted on the packaging. At best, consumers would only notice the slogan at the moment of purchase, when the barcode is scanned at the checkout.

Such subordinate use was not sufficient to counteract a purely promotional understanding of the slogan. It was not sufficient to fulfil the purpose of the trade mark, namely to indicate the origin of computers from Apple and to secure a market share for these computers. Consumers therefore would see THINK DIFFERENT on the packaging, if they perceived the slogan there at all, as pure advertising.

The renown of the slogan did not help Apple. At best, it could only be assumed that the use of the slogan as a trade mark led to its recognition. But that is not proof.

In effect, Apple was unable to prove the use of its trade marks in the relevant period. All three trade marks with the famous tagline were cancelled.

Court of Justice of the European Union of 8 June 2022, T-26/21 to T-28/21.

Learnings: Make sure that any valuable slogans on your products or in relation to your services are used as a trade mark. You must be prepared for the fact that your customers may see it as pure advertising, which is not sufficient to maintain the legal status of a trade mark. Therefore, counteract such an understanding by clearly emphasising the slogan as an indication of origin. The slogan must, at least, also refer to the origin of the products or services marked with it as coming from your company.

Reference: You might also wish to read this article on taglines:

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