The Federal Administrative Court confirmed the Swiss IPO's refusal to grant protection for Apple's international trade mark IR 1'051'626 "home button", claiming protection for smarphones. Like the OHIM (soon the EUIPO) before it, it found the mark to lack distinctive character. Unlike the OHIM/EUIPO, it was not convinced by the evidence on file that the mark had acquired distinctiveness - which is remarkable given that Apple, and the iPhone in particular, enjoys a very high market penetration in Switzerland, certainly higher than in the EU across all Member States.

The sign in question, pictured above, is a graphic (two dimensional) representation of the iPhone's home button. The Court reasoned that the distinctinveness of both two-dimensional and three-dimensional marks had to be assessed according to the same standard. Shapes that the consumer expected based on the function or aesthetics of the product in question were generally not considered as indications of source and lacked distinctive character. The mark here was not sufficiently distinctive from common "home buttons" found on many smartphones and tablets. The consumer would not expect that the shape of the button as such was an indication of source, but would rather perceive its shape as decorative.

Apple then tried to argue that the mark had acquired distinctiveness, being placed "literally at the center" of the most popular electronic device in Switzerland. The Court first pointed out that much of the evidence submitted only concerned the marks APPLE or IPHONE, but not the mark in question. The fact that the sign was extensively used as part of the product did not demonstrate that it was used as a trade mark, i.e., as an indication of source, and perceived by consumers as such, rather than as decorative/functional. When the mark was used as an integral part of the product, its use was not commonly perceived as indicative of source.

Apple argued in vain that the sign was placed on an area where on many smartphones the trade mark was found. The Court found this unconvincing, because while it was true that the trade mark on many smartphones was placed centrally below the screen, this concerned traditional word and/or figurative marks. Such placement did not lead consumers to perceive the shape of functional elements of the phone as indications of source.

For the practitioner, the take-away of this decision is that acquired distinctiveness of non-traditional marks can, for all practical purposes, only be proven by demoscopic survey. There are other advantages in submitting demoscopic surveys already at the stage of registration, rather than later in a nullity challenge, namely that the difficulty of proving acquired distinctiveness for a date in the past can be (largely) avoided.

Also note that Apple has changed the appearance of the home button starting with the iPhone 6, presumably because of the fingerprint reader now included in the home button, and the mark, even if registered, would therefore likely be subject to cancellation for non-use 5 years from the expiration of the opposition period.

Decision B-2418/2014 of 17 February 2016 (not final).