Azerbaiyán

This is an informal case summary prepared for the purposes of facilitating exchange during the 2024 WIPO IP Judges Forum.

Session 4

Baku Administrative Court, Azerbaijan [2022]: Apple Inc. (US) v Intellectual Property Agency of the Republic of Azerbaijan, 2-1(112)-833/2022

Date of judgment: July 05, 2022

Issuing authority: Baku Administrative Court

Level of the issuing authority: First instance

Type of procedure: Judicial (Administrative)

Subject matter: Trademark

Plaintiff: Apple Inc. (US)

Defendant: Intellectual Property Agency of the Republic of Azerbaijan

Keywords: Distinctiveness of trademark, Lack of inherent distinctiveness, Non-protectable elements, Intended use of the product

Basic facts: Apple Inc. (US) (the plaintiff) filed an application with the Intellectual Property Agency of the Republic of Azerbaijan to designate its international registration for the below mark (IR 1417646) in Azerbaijan for goods in Class 9 of the Nice Classification.

The Patent and Trademark Examination Center under the Intellectual Property of the Republic of Azerbaijan according to its decision dated May 29, 2019, granted protection to the mark, except for the word part of the mark, i.e., “FACE ID”, which was disclaimed.

The plaintiff unsuccessfully disputed the decision before the Appellate Board of the Intellectual Property Agency of the Republic of Azerbaijan, claiming that the element “FACE ID” is unconditionally registered as a word mark in most countries and, therefore, demanding the registration of the word element “FACE ID” as well.

The plaintiff sought to register the word elements of the mark and subsequently appealed decision to the Baku Administrative Court.

In its submission, the plaintiff argued that the word combination “FACE ID” is not descriptive in relation to the goods covered by it in Class 09, that it is registered in many other countries (both as a word mark and as a combined mark consisting of verbal and figurative elements), and that the word element “FACE ID” has acquired distinction in Azerbaijan through its use on the internet. The plaintiff did not provide any further proof related to its arguments. The plaintiff also stated that “FACE ID” is registered in the country of origin.

The plaintiff further stated that “FACE ID” was first introduced in September 2017 with the iPhone X device and has been continuously used by Apple on its devices. Therefore, every consumer who uses an iPhone X or any later-generation device produced by Apple automatically encounters the “FACE ID” icon. The words “FACE ID” used together do not appear in the English dictionary. Moreover, it is impossible to determine the descriptive character of the term 'FACE ID' in relation to the goods in Class 09 for which protection is sought. The plaintiff argued that the term “FACE ID” does not inherently indicate the nature, quality, quantity, or intended purpose of the goods.

Held:  The Court dismissed the action.

Relevant holdings in relation to the strength of trademarks: The Court found that the descriptive nature of the mark should not be defined in abstract form; it should be considered in relation to the goods that are claimed. Face recognition technologies called “FACE ID” and multi-purpose applications are used as part of device identification technologies and in programs. Face recognition as an identification technology indicates the characteristics and features of this type of goods and has become sui generis (a general expression). Therefore, the “FACE ID” element indicates and describes the intended use of the claimed goods.

Relevant legislation:

·       Law of the Republic of Azerbaijan No. 504-IQ of June 12, 1998, on Trademarks and Geographical Indications

·       Decision of the Cabinet of Ministers of the Republic of Azerbaijan on the approval of the Rules on application and examination of application documents for registering trademarks

Law of the Republic of Azerbaijan No. 504-IQ of June 12, 1998, on Trademarks and Geographical Indications

Article 5: Absolute Grounds for Refusal of Trademark Registration

The following signs shall not be registered as trademarks:

c) Signs that are used to designate the type, quality, quantity, intended purpose, value, or other characteristics of goods or services, as well as the place of origin of the goods and the time of their production.

A detailed interpretation of the aforementioned clause is also provided in Clause 4, Subsection “b” of the “Rules on application and examination of application documents for registering trademarks,” approved by a decision of the Cabinet of Ministers of the Republic of Azerbaijan.