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.
Author
Euan has been working and advising on intellectual property matters and commercial contracts for more years than he cares to admit (over 25!).
He regularly advises on all areas of the law relating to intellectual property, technology and media, digital and non digital, contentious and non contentious and he is involved on a daily basis with drafting, negotiating and advising upon all manner of commercial contracts from sale to purchase; distribution to retail; sponsorship to endorsement and everything in between.
In addition he is focused on helping businesses identify, protect, commercialise and drive value from their intellectual property including, amongst other things, by complex (and not so complex) licensing structures.
Euan tutors on Intellectual Property and Commercial Contracts at the University of Strathclyde Law School.
Euan is a director of the Scottish Society for Computers and Law and a member of the SCL Media Board. He is also an active trustee of the Edinburgh Art Festival and an ambassador for the Glasgow School of Art Development Trust.
Euan is a director of Business Forum Scotland and chairs events assisting the development of high growth Scottish companies.
if you require expert advice, assistance or representation in relation to any area of IP law, please contact Euan Duncan.
Morton Fraser MacRoberts LLP
MacRoberts LLP, one of the largest independently owned law firms in Scotland, was founded over 150 years ago by the MacRobert family. We are a leading Scottish commercial law firm with full-service offices in Dundee, Edinburgh and Glasgow with a client base that reaches across Scotland and beyond.
