The Intellectual Property Office (IPO) has upheld Swatch AG’s opposition to registering the trademark “iWatch” by Apple Inc in the UK.
In 2014, Apple filed a trademark application in the UK for "iWatch" which covered computer software, security devices, monitors and monitoring devices, cameras, computers, computer hardware, computer peripherals, wireless communication devices, radios, audio and video devices, global positioning system devices, accessories, parts, components, and cases for the goods.
Swatch had previously registered several marks under the names "iSwatch" and "Swatch". It contended that Apple's application for the "iWatch" trademark was identical, or very similar, to the goods and services covered by the marks it had already registered. Swatch argued that the Apple mark would be likely to cause confusion amongst the public. In addition, Swatch indicated the use of the mark would benefit from the reputation that Swatch already holds with regard to the production of horological and chronomatic equipment.
Apple suggested that the trademark should not be opposed on the basis that people associate Apple products with having the prefix "i". The fact that they had "a family of 23" previously registered marks of that nature was, in their view, a way in which the public associated products as ones made by Apple and therefore would not be confused with Swatch's marks.
Swatch's opposition was successful for all the goods apart from computer software, security devices, computer peripherals, parts, components, and cases for the goods. For these, they failed to demonstrate to the IPO that they were so similar or identical that confusion would be caused amongst consumers.
In a relatively short space of time, Apple has developed an impressive catalogue of "i" products. But a notable omission from that catalogue is their smart watch in relation to which Apple has had to settle for the "Apple Watch" name.
It would appear that Swatch have successfully managed to stop the pursuit of all "i" marks.
This case is not quite a victory for David over Goliath (Swatch is a global brand founded in 1983 with a turnover in excess of 8 billion Swiss francs), but it does show that a business (no matter how big and powerful) cannot acquire rights where prior rights rest with others.
It also demonstrates that when considering a branding strategy, thought must be given to existing rights held by others – and if there are, how this might be resolved, for example, by co-existence agreement.
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