Singapore Trade Marks – Apple succeeds in defending their “IWATCH” trade mark – SWATCH AG (SWATCH SA) (SWATCH LTD) V APPLE INC. [2019] SGIPOS 1

Intellectual Property News 

In a decision rendered by the Intellectual Property Office of Singapore (IPOS), IPOS has held that Swatch AG failed on all grounds of its opposition against Apple Inc and the latter could therefore proceed with its registration.

 

(A) Who are the parties involved in this case?

(a) Swatch AG (“Opponent”, also referred to as Swatch)

Swatch is well established in the watch industry, incorporated in Switzerland but having a worldwide presence. Its corporate group – the Swatch Group – owns a stable of Swiss watch brands such as Swatch, Omega, Tissot, Longines and Rado. Swatch’s products were first launched in 1983 it has since met with success through the years. The Swatch Group has distribution subsidiaries worldwide in Europe, the United States of America, the Middle East, Africa, Oceania and Asia.

(b) Apple Inc. (“Applicant”, also referred to as Apple)

Apple is a Californian technology company founded in 1976. It designs, manufactures, markets and sells various types of mobile communication and media devices, as well as networking solutions and third-party digital content and applications. Its key products include the iPhone, iPad, Mac and Apple Watch.

 

(B) What actually happened?

Apple and Swatch have been in several other opposition proceedings with either Apple bringing an action against Swatch or vice versa. The most recent of the Apple and Swatch cross-swords was one before IPOS in involving Apple’s “THINK DIFFERENT” and Swatch’s “TICK DIFFERENT” marks. In that case as recalled, Apple was the Opponent to Swatch’s mark. Now in this present case, the roles have been switched as Swatch now opposes to the registration of Apple’s “IWATCH” mark (“Applicant’s Mark”) and it relies on Sections 8(2)(b), 8(4) and 8(7)(a) of the Trade Marks Act (Cap 332. 2005 Rev Ed) (“the Act”) in its opposition to the registration of the Applicant’s mark.

The Opponent is the registered proprietor and the owner at common law of the trade marks “SWATCH” and “iSWATCH” in various iterations but despite its list of registered marks, the Opponent did not register the plain word marks of “SWATCH” and hence the significance of this case is one that the Opponent has sought to rely on its unregistered “SWATCH” mark along with its earlier registered “iSWATCH” mark to bring about an opposition claim.

 

(C) What is/are the issue(s) in dispute?

(a) Section 8(2)(b)

The Opponent contended that the Applicant’s registration of their “IWATCH” mark should be refused due to similarity with its earlier unregistered “SWATCH” and earlier registered “iSWATCH” marks on the basis of Section 8(2)(b) which prohibits the registration of a mark which is similar to an earlier mark, registered in respect of identical goods or services and where, because of this, there exists a likelihood of confusion on the part of the public.

(b) Section 8(4)

The Opponent further contended that the Applicant’s Mark should be refused under Section 8(4) on basis that its earlier mark was well-known in Singapore and that the similarity of the Applicant’s mark would indicate a connection between the goods and services associated with the two marks and such is likely to damage the interests of the Opponent.

(c) Section 8(7)(a)

Finally, the Opponent also submitted that the mark should be refused on grounds of passing off.

 

(D) HOLDING 

(a) Section 8(2)(b)

The Assistant Registrar (“AR”) found that the competing marks are more dissimilar than similar visually, aurally and conceptually. With regard identity or similarity of goods, the AR found that such similarity of identity is not present in the case. Further, the AR found that there would not have been a reasonable likelihood of confusion even if the marks were found to be similar. The ground of opposition under Section 8(2)(b) therefore failed.

(b) Section 8(4)

For the same reasons found in her analysis under Section 8(2)(b), the AR found that the whole or essential part of the Applicant’s Mark is not identical with or similar to the Opponent’s marks under Section 8(4). Since the Opponent has not satisfied the essential element of marks-similarity, the remaining elements need not be considered. Made in passing however, the AR noted that although the Opponent’s mark could enjoy a high degree of recognition in its home country, it has not led her to see how that translates to the public in Singapore. As such, the AR found that there are doubts whether the Opponent’s mark is well known in Singapore. The ground of opposition under all three limbs of Section 8(4) therefore failed.

(c) Section 8(7)(a)

Since the Applicant’s mark was found to be more dissimilar than similar to the Opponent’s mark, misrepresentation cannot be established. Consequently, if there is no misrepresentation, the requirement of damage in a claim of passing off cannot be made out, whether or not the element of goodwill has been demonstrated. As such, the Opponents failed on the grounds of Section 8(7)(a).

 

(E) RATIONALE 

(a) Section 8(2)(b)

In relation to the ground of Section 8(2)(b), the AR noted the “step-by-step” approach as re-affirmed by the Court of Appeal in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911 that she has to systematically consider the similarity of marks, similarity of goods or services, and the likelihood of confusion arising from the two similarities. If, for any one step, the answer is in the negative, the inquiry will end, and the opposition will fail.

The AR found that:

Visually, the Opponent’s unregistered “SWATCH” mark is more dissimilar than similar to the Applicant’s Mark whilst the Opponent’s registered “iSWATCH” is dissimilar to the Applicant’s Mark. The AR noted that the Opponent’s unregistered “SWATCH” mark is an invented word whereas the Applicant’s Mark pertains to the internet and watches whilst the Opponent’s registered “iSWATCH” has an additional letter “S” and more crucially the letter “I” in the mark is highly stylised which sets the “iSWATCH” mark apart from the Applicant’s Mark at the outset.
Aurally, the Opponent’s unregistered “SWATCH” mark is more dissimilar than similar to the Applicant’s Mark as the Opponent’s unregistered “SWATCH” mark consists of one syllable whilst the Applicant’s Mark consists of two syllables to be read as “I-WATCH”. On the other hand, the AR found that the Opponent’s registered “iSWATCH” bears some similarity to the Applicant’s Mark in its pronunciation of “i-SWATCH” and “I-WATCH”.
Conceptually, the AR highlighted again that the Opponent’s “SWATCH” mark is an invented word whilst the Applicant’s Mark pertains to the idea of internet and watches and hence the Opponent’s unregistered “SWATCH” mark is more dissimilar than similar to the Applicant’s Mark. On the other hand, the Opponent’s registered “iSWATCH” is marginally similar to the Applicant’s Mark on the basis that they both have the letter “I” which alludes to the concept of internet.

Based on the findings above, the AR concluded that in comparison of the marks, the Opponent’s earlier unregistered “SWATCH” mark is overall dissimilar to the Applicant’s Mark and whilst the Opponent’s earlier registered “WATCH” mark bears some similarity to the Applicant’s Mark, the marks are similar only on the low scale. As such, the AR was not satisfied that the Opponent has met the threshold of the step-by-step approach and found that the inquiry would therefore end.

Nevertheless, the AR considered whether there is identity or similarity of goods in the event her findings above are wrong and found that whilst traditional watches and smart watches are similar in the sense that they are able to tell time and worn on the wrist, an error has arisen because the Opponent took into account that the smart watches are able to check emails to condemn these watches as effectively wearable computers which in the AR’s view such smart watches should not be captured within the descriptions of “computers; computer hardware; computer peripherals; wireless communication devices” as applied for by the Applicant. Hence, the AR found that the inquiry would therefore end as there would not be any similarity of goods.

Again, the AR considered whether there is any likelihood of confusion in the event the findings for identity and similarity of goods were otherwise and found that there would not be any likelihood of confusion as the Opponent’s reputation in Singapore were not focused on “smart watches” as compared to the Applicant’s presence in Singapore. Hence, the AR found that all in all, the ground of opposition under Section 8(2)(b) would therefore fail.

(b) Section 8(4)

Under Section 8(4), the preliminary element to be satisfied is that “the whole or essential part of the trade mark must be identical or similar to an earlier mark”. If this element is not made out, the ground of opposition under any limb of Section 8(4) will fail.

Despite her observations that the language of Section 8(4) on marks-similarity is worded differently from Section 8(2)(b), the AR referred to the decision in Sarika Connoisseur Café Pte Ltd v Ferrero SpA [2013] 1 SLR 531 that the similarity analysis is nevertheless the same. Having found in her analysis under Section 8(2)(b) that the Applicant’s Mark is not similar to the Opponent’s marks, the AR found for the same reasons that the whole or essential part of the Applicant’s Mark is not identical with or similar to the Opponent’s marks under Section 8(4). As such, the ground of opposition under all three limbs of Section 8(4) fails.

(c) Section 8(7)(a)

Section 8(7)(a) provides that “A trade mark shall not be registered if, or to the extent that, its use in Singapore is liable to be prevented by virtue of any rule of law (in particular, the law of passing off) protecting an unregistered trade mark or other sign used in the course of trade.

To succeed on the ground of opposition under Section 8(7)(a), an opponent must establish the classical trinity of goodwill, misrepresentation and damage. As the Applicant’s Mark has been found to be more dissimilar than similar to the Opponent’s marks, misrepresentation cannot be established here. Consequently, if there is no misrepresentation, the requirement of damage in a claim of passing off cannot be made out, whether or not the element of goodwill has been demonstrated. As such, the Opponent could not succeed on the ground of opposition under Section 8(7)(a).

 

(F) Point of Interest

Other than failing on the ground that the Applicant’s mark is visually, aurally and conceptually similar to the Opponent’s mark, the interesting issue here is how the Registrar views how smart watches are being classified in the NICE Classification. In this “smart” society now, will this become a common point of contention for similar cases in the future or will this case set as a precedent that smart watches are not considered to be a wireless communication device despite being enabled with wireless connectivity?