If you have more than two people living in your house you probably have multiple Apple devices half of which use the old plug and half the new. Well, it’s the old plug we’re interested in here – it looks like this:
Apple applied to register this as a trade mark in relation to electrical connectors and so forth in early 2012 (with a Convention priority date of 11 July 2011).
The examiner raised a ground of objection under s 41(5) as it stood at the relevant time. After five adverse reports, Apple sought a hearing. You can find the decision here.
The hearing officer considered that the examiner had incorrectly relied, at least in part, on the view that “the more ‘simple’ a trade mark is, the more likely it is that another trader would, actuated only by proper motives, require to use that trade mark.”
I do not consider that this necessarily holds true and does not address the real issue which is enunciating why another trader, actuated only by proper motives, would need to use the Trade Mark. Simplicity is often the essence of a good trade mark. To drawn an analogy, the word trade mark OXO, used in relation to beef cubes or beef concentrate for cookery, is obviously an extremely simple, yet effective, trade mark – it contains oblique reference to the nature of the goods, it is a palindrome and may even be inverted or read in a reflection and yet it still reads OXO. Obviously, that trade mark is very simple but its simplicity does not prevent it acting as a very effective trade mark.
The hearing officer considered that it is not obvious why other traders would, without improper motive, need to use the Trade Mark on their similar goods and therefore took the view that s 41(5) was the appropriate sub-section to apply. (Note the use of the word “need” here – consistent with the majority of the High Court in Cantarella and different from earlier authority that used “want” or desire”).
The use of the mark by the relevant date was very significant (as you can imagine) and there was survey evidence which showed that 32% of consumers identified the mark as being associated with Apple. The hearing officer considered this to be sufficient to support registration pursuant to s 41(5). The mark was accepted for possible registration.