Leeds IP lawyers defeat Apple in High Court trademark dispute

Richard Kempner

A team from Leeds IP law firm Kempner & Partners has defeated tech giant Apple at the High Court over a trademark dispute.

Apple applied for protection in the UK of its IWATCH brand of smartwatches. The High Court ruled that it was not registrable as a trademark.

It had tried previously to register IWATCH, but was opposed by Arcadia Trading (unrelated to Philip Green’s Arcadia Group) last year.

Kempner & Partners repsresented Arcadia, and the High Court agreed, rejecting Apple’s appeal and ordering the technology giant to pay Arcadia’s costs.

Kempner & Partners senior partner, Richard Kempner, said: “The High Court judge was a specialist in intellectual property matters and had no problem rejecting all of Apple’s arguments. The case primarily focused on the class of goods a smartwatch falls into.

“The judge held that it could just as easily fall into the computer software class as the watch class. Apple were also defeated in their argument that their other “i” marks (including iPhone and iPad) entitled them to protect IWATCH by virtue of the “acquired distinctiveness” associated with that use.

“This decision represents a nail in the coffin in relation to Apple’s latest attempt in the UK to protect their technology prefixed with the initial I or i. They would have stood a better chance of protecting the term IWATCH had they, for example, excluded smartwatches from their trade mark application. They chose not to do so, presumably for the very reason that it would negate the protection they most wanted: to protect their smartwatch, even though it is in fact currently called an Apple Watch.

“Presumably, following this decision against them, they won’t be changing that name anytime soon.”

Established in 2009, Kempner & Partners is a 10-strong specialist team of intellectual property law specialists, with a client list that includes household and international names Asda, Jet2.com, BASF, Farrow and Ball, JD Sports and REGUS.

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