Swatch AG (Swatch SA) (Swatch Ltd.) v Apple Inc. [2022] SGIPOS 13

Case:

Swatch AG (Swatch SA) (Swatch Ltd.) v Apple Inc. [2022] SGIPOS 13

 

THINK DIFFERENT

 

Tribunal/Court:

Intellectual Property Office of Singapore (“IPOS”)

 

Type:

Opposition

 

Opponent:

Swatch AG (Swatch SA) (Swatch Ltd.), a Swiss watch manufacturer. (“Swatch”)

 

Applicant:

Apple Inc., a company with a product portfolio of mobile communications and media devices, personal computers, and smartwatches. Its products bear highly recognisable names, such as “iPhone”, “iPad”, “iMac” and “Apple Watch”. (“Apple Inc”)

 

Background:

Over the years, Swatch and Apple have embroiled in legal disputes worldwide over trademarks including “TICK DIFFERENT”, “ONE MORE THING” and “SWATCH ONE MORE THING”. In 2019, the Swiss Court rejected Apple’s appeal to oppose the registration of the trademark “TICK DIFFERENT” by Swatch. More recently last year, Apple’s attempt to block the registration by Swatch for the trademarks of “ONE MORE THING” and “SWATCH ONE MORE THING” was rejected by the English courts.

 

In this present case, Apple applied to register the trade mark “THINK DIFFERENT” in Singapore in Class 9 for, among other things, computers; computer hardware; computer peripherals; computer software; network servers; smartwatches; smartphones; wrist-mounted smartphones; watches that communicate data to smart phones; smartphones in the shape of a watch. Swatch filed an application to oppose the registration of the application mark, leading to the present proceedings.

 

Swatch’s sole ground of opposition is based on Section 7(6) of the Trade Marks Act 1998, alleging that Apple made its application to register the application mark in bad faith.

 

Claim(s)/Issue(s):

The main issues before the Tribunal are:

 

Whether Apple’s application to register the application mark was done in bad faith?

 

Whether the four (4) allegations of bad faith can be established?

Whether Apple had the intention to use the application mark?
Whether Apple had the intention to ride on the Swatch’s goodwill and reputation, and to benefit from a favourable association?
Whether Apple had the intention to oppose based on the application mark?
Whether Apple is the bona fide proprietor of the application mark?

 

Decision:

After reviewing the evidence and considering the parties’ submissions, the Registrar found that:

 

All four allegations of bad faith by Swatch have not been established. Therefore, the ground of opposition fails and the opposition by Swatch was accordingly dismissed; and

 

Apple’s THINK DIFFERENT trademark shall proceed with the registration.

 

Points of interest:

 

The proceedings clarified/affirmed the following:

 

The burden of proof to establish bad faith falls on the Opponent. In this case, the onus is on Swatch to proof the allegations of bad faith.

 

No intention to use the Application Mark

On the allegation that Apple had no intention to use the application mark, Swatch claimed that a number of trade mark applications filed by Apple in various jurisdictions demonstrate that Apple’s past registrations did not claim “smartwatches; smartphones; wrist-mounted smartphones; watches that communicate data to smart phones; smartphones in the shape of a watch” (“the Smartwatch Specification”) in their specifications in Class 9.

 

Apple submitted that its reason for filing the opposed application is straightforward, namely, to address the potential gap in the protection of its mark in relation to the Smartwatch Specification, specifically its Apple Watch. The Registrar affirmed that Apple is not obliged under the law to keep its filings worldwide consistent by filing for the Smartwatch Specification worldwide.

 

Any trade mark applicant has the freedom to structure its global filing strategy based on a range of factors including budget and prevailing circumstances, among others. There is no requirement for any applicant to have consistent filings worldwide. The absence of consistency does not establish that any applicant has no intention to use the trade mark in a certain jurisdiction.

 

In any event, there is a control mechanism for the registered use of registered marks. If a registered proprietor does not use its registered mark for a consecutive period of five years after the completion of registration, and there is no proper reason for such non-use, a revocation is very likely.

 

Intention to ride on the Opponent’s goodwill and reputation and to benefit from a favourable association

This claim was not considered further by the Registrar in view that no additional arguments were put forward.

 

Intention to oppose based on the Application Mark

Swatch claimed that Apple, through its application to register the application mark, sought to prevent third parties (including Swatch) from leveraging on Apple’s rights in words ending with the word “different”, which is an attempt to somewhat stifle competition.

 

Apple maintained that it is well within its rights to protect its interests in the THINK DIFFERENT marks worldwide by filing trade mark applications for the same. Apple’s action of protecting its legitimate interests through registration should not be considered as bad faith conduct.

 

The allegation that Apple intended to use the application mark as a tool to oppose or get back at Swatch following previous unsuccessful opposition against Swatch for the registration of other trademarks is not a legitimate basis to prove Apple’s ultimate motive to oppress competition.

 

The claim concerning Apple’s intention to stifle competition was not supported by any evidence.

 

It was ruled that there is nothing inherently wrong with asserting one’s registered trade mark against a later mark through opposition.

 

A key and relevant evaluation is whether the trade mark applications are well within the standards of acceptable commercial behaviour observed by reasonable and experienced men in the particular area. Emotive and/or baseless assumptions will carry no weight.

           

 

Applicant is not the bona fide proprietor of the Application Mark

This claim was not considered further by the Registrar in view that no additional arguments were put forward.

 

Opposition is a mechanism provided by law for an opponent to object to the registration of a mark based on particular grounds in the law and not by way of bare assertions or assumptions.