Charlotte May QC and Jaani Riordan represented Apple in an appeal by Swatch concerning its trade mark applications for the signs “Swatch One More Thing” and “One More Thing”.
Apple had shown that the phrase “One more thing” had become associated with Apple by virtue of the use of the phrase, primarily by Steve Jobs, in high-profile Apple product launch events. The Hearing Officer had decided that there was a prima facie case that Swatch’s trade mark applications had been filed with the intention of parodic use so as to raise the stakes in a broader dispute with Apple, rather than because Swatch had any intention to use the signs themselves, and that in the absence of evidence to the contrary the applications had been made in bad faith for section 3(6) of the Trade Marks Act 1994. Swatch appealed this decision.
Allowing the appeal, Mr Iain Purvis QC (sitting as a Deputy Judge of the High Court) considered the question of bad faith in detail. It was material that there was no evidence of a pre-existing practice by Swatch of parodic advertising in the past, and it was not clear how the suggested parodic use of the signs would be effective when the Hearing Officer had found that “one more thing” was only associated with Apple by a small number of people. Without a clear idea of what kind of parody Swatch might engage in, it was not legitimate for the Hearing Officer to conclude that Swatch’s intentions had stepped over the line between the appropriate and inappropriate use of a trade mark.
However, he did not accept Swatch’s argument that Apple’s case on bad faith should have been rejected because it was predicated on a proposition which had been rejected by the Hearing Officer. The Hearing Officer had decided that Apple did not own goodwill in the phrase “one more thing” for the purposes of passing off, and for that reason had rejected Apple’s opposition under section 5(4)(a). Mr Purvis QC agreed with Apple that it was self-evident that a section 3(6) opposition is free-standing from a section 5(4)(a) opposition and does not require any enforceable right in the mark in the UK to be established.