Swatch AG (swatch SA) vs. Apple Inc. - (29 Jan 2021)

The degree of similarity of the goods should be considered in relation to the degree of similarity of the marks

Intellectual Property Rights

The Respondent, Apple Inc. (‘Apple’) applied to register its IWATCH trade mark. The Appellant, Swatch AG (Swatch SA) (‘Swatch’), opposed these applications. Swatch is the proprietor of the trade mark registration in class 14, under the representation SWATCH. Swatch’s opposition relied upon Sections 10(6), 10(12), 10(14) and 10(17) of the Trade Marks Act, 1993. In essence, Swatch contended that, the IWATCH and SWATCH marks are confusingly similar and thus, the IWATCH mark, in respect of the classes of goods for which registration was sought, was likely to deceive or cause confusion.

The degree of similarity of the goods should be considered in relation to the degree of similarity of the marks. As to a visual comparison of the marks, both marks make use of a common element, the word ‘WATCH’, which does make for some visual similarity. However, the use of the same descriptive word, of a commonplace item, serves to place greater emphasis on the significance of the prefix in each of the marks. It is the ‘I’ in IWATCH that is the visual differentiator of the mark. So too, the joining of ‘S’ to ‘WATCH’, to make up the word ‘SWATCH’, provides a visual cue based on the word rather than its component parts. These features of the marks give rise to a clear visual differentiation.

An aural comparison of IWATCH and SWATCH indicates a clear difference. As with the visual comparison, there is some conceptual identity in that both marks reference WATCH. The use of the word ‘watch’ is a descriptive word. The SWATCH mark enjoys no distinctiveness by incorporating a descriptive word of obvious relevance to the goods in respect of which the mark is registered.

The likelihood of confusion was considerably diminished by the fact that, over the past 15 years Apple has established a family of i-prefix trade marks. The family is made up of the iPod, iPhone, iPad, iTunes, and iCloud devices and services. Apple claimed that, these products and services have gained great popularity around the world, and in South Africa, and that a consumer who encounters a new product from Apple with the letter ‘i’ will recognise that the product and trade mark form part of the Apple i-prefix family of trade marks and products. The conclusion that there is no likelihood of confusion or deception is robust, without regard to the evidence that, the IWATCH would form part of a family of i-prefixed trade marks.

The consumers of the watches of Swatch and Apple are likely to be more affluent and more concerned with the precise brand of watch that they require. Consumers of this kind were found to be less likely to be deceived or confused by the limited similarities between the marks. The Court held that upon a visual, aural and conceptual comparison, the marks did not yield similarities of sufficient significance to make the marks confusingly or deceptively similar. Appeal dismissed.

Tags : TRADEMARK REGISTRATION LEGALITY