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
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"
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
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
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Trading under your name is an appealing idea, especially in the fashion world where designers frequently use their own names as brands (think Hugo Boss, Donatella Versace, and Tom Ford, to name but a few).
1.The trade mark shall not entitle the proprietor to prohibit its use in relation to goods which have been put on the market in the Community under that trade mark by the proprietor or with his consent.
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