Apple Inc v Arcadia Trading Ltd: IWATCH trademark bid fails as too descriptive
ApplevArcadia Trading
- Court
- High Court
- Judgment
- 10 March 2017
- Citation
- [2017] EWHC 440 (Ch)
Fame attached to one name in a family of brands doesn't automatically transfer to a new, descriptive-sounding name.
Apple tried to register IWATCH as a trademark but Arcadia Trading successfully argued it was too descriptive of a smart watch. The High Court agreed and Apple lost its appeal.
What happened
Brightflash applied to register IWATCH as a trademark covering a wide range of electronic goods, and later assigned the application to Apple. Arcadia Trading opposed it, arguing the mark was descriptive and devoid of distinctive character, and initially also claiming the application was made in bad faith. The trademark registry's hearing officer rejected the bad faith argument but refused the application for goods that could cover smart watches, such as computers, wireless communication devices and computer software, while letting it through for unrelated goods like cameras and radios. Apple appealed the partial refusal to the High Court.
What did the court decide in Apple v Arcadia Trading?
The High Court dismissed Apple's appeal. It agreed with the hearing officer that a smart watch, a device with both computing and timekeeping functions, could properly fall within the broad Class 9 terms Apple had applied for, not just the watch classification in Class 14. Because of that, IWATCH simply described an internet-connected watch-like device for those goods, and the same reasoning covered related computer software. The court also found that evidence showing Apple's other I-prefixed names, such as iPhone and iPad, had become well known did not prove that IWATCH itself had acquired distinctive character through use.
What we learned from this
- What I'd take from this is that a business can't borrow the reputation of one successful name to rescue a different, descriptive name, even within the same family of products.
- If a name simply describes what the product is or does, evidence that your other brands are famous usually won't be enough to get it registered.
- Think about how a product might be classified across more than one category of goods. A descriptive problem in one category can sink an application even if the name looks fine in another.
- Opposing a famous company's trademark application is possible on descriptiveness grounds alone, without needing to prove bad faith.
Things to be aware of
- This case turned on how the goods were classified; a smart watch was treated as fitting within broad computer and communication device categories, not just the separate watch category.
- The bad faith argument against Apple had already failed at the earlier hearing and wasn't part of this appeal, so the case is really about descriptiveness only.
- The mark was still allowed through for some unrelated goods like cameras and radios, so the refusal wasn't a blanket ban on IWATCH everywhere.
The businesses involved
Apple Inc
Technology company that makes consumer electronics and software. It took on the IWATCH trademark application by assignment from Brightflash and fought to register it in the UK.
- Note
- Registered outside the UK
Arcadia Trading Ltd
Registered in England in December 2006 and based in St Albans. Companies House records it as a dormant company holding no trademarks on the UK trademark register. It opposed Apple's application.
- Companies House
- 06036811 Active
- Incorporated
- December 2006
- Registered office
- St Albans
- Business activity
- Dormant Company
- UK trademarks
- 0
What happened next
- Fieldfisher noted the High Court's finding that both elements of IWATCH, 'I' and 'WATCH', were descriptive when combined for the relevant goods.Source: Fieldfisher, August 2017
- World Trademark Review reported that the High Court confirmed the mark was not registrable for computers, computer software and related goods.Source: Worldtrademarkreview
What others said about it
- IPKat set out that Arcadia's opposition originally rested on two grounds, bad faith and descriptiveness, with only the descriptiveness ground ultimately succeeding.Source: IPKat, April 2017
- Waterfront Law framed the dispute as part of wider 'smartwatch wars' between brand owners trying to claim watch-related names.Source: Waterfront
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This page is for information purposes only and does not constitute trademark advice or guidance. Summary drafted with AI assistance from the published judgment and checked by The Trademark Helpline (how we write these). Judgment: [2017] EWHC 440 (Ch) on Find Case Law, published under the Open Justice Licence. Company details from Companies House; trademark counts from the UK trademark register. Last reviewed 26 October 2026. Report an error.
