Case Details
- Citation: [2018] SGIPOS 15
- Court: Intellectual Property Office of Singapore
- Date: 2018-08-14
- Judges: Ms See Tho Sok Yee
- Plaintiff/Applicant: Swatch AG (Swatch SA) (Swatch Ltd.)
- Defendant/Opponent: Apple Inc.
- Legal Areas: Trade marks and trade names – Opposition to registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2018] SGIPOS 1, [2018] SGIPOS 12, [2018] SGIPOS 15, [2018] SGIPOS 2
- Judgment Length: 25 pages, 10,290 words
Summary
This case involves a trade mark opposition between tech giant Apple Inc. and Swiss watchmaker Swatch AG. Apple opposed Swatch's applications to register the "Tick different" trade mark in Singapore, arguing that it was similar to Apple's famous "Think Different" slogan and trade mark. The Intellectual Property Office of Singapore had to determine whether there was a likelihood of confusion between the two marks, and whether Swatch's mark should be allowed registration.
What Were the Facts of This Case?
Apple Inc. is a well-known technology company that launched a highly successful "Think Different" advertising campaign in the late 1990s. The campaign featured black and white photos of famous historical figures along with Apple's colorful logo and the slogan "Think Different". The campaign was widely praised and helped revive Apple's brand at a time when the company was struggling.
In 2015, Swatch AG (a subsidiary of the Swatch Group) filed two trade mark applications in Singapore for the mark "Tick different". The applications covered a broad range of goods in classes 9 and 14, including electronic devices, computers, and watches. Apple opposed the registration of Swatch's "Tick different" mark, arguing that it was confusingly similar to Apple's earlier "Think Different" trade mark.
The key facts are that Apple had an earlier registered trade mark for "THINK DIFFERENT" in Singapore, and Swatch was seeking to register a similar-sounding mark "Tick different" for overlapping goods and services. The Intellectual Property Office of Singapore had to determine whether Swatch's mark was too similar to Apple's, and whether allowing its registration would cause consumer confusion.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether Swatch's "Tick different" mark was similar to Apple's earlier "THINK DIFFERENT" trade mark under Section 8(2)(b) of the Singapore Trade Marks Act.
- Whether the goods and services covered by Swatch's applications were identical or similar to those covered by Apple's earlier trade mark registration.
- Whether there was a likelihood of confusion on the part of the public if Swatch's "Tick different" mark was registered, given the similarity of the marks and the overlapping goods/services.
How Did the Court Analyse the Issues?
The Hearing Officer applied the three-step test set out in the Staywell v Starwood Hotels case:
- Similarity of marks: The Hearing Officer compared the visual, aural, and conceptual similarities between Apple's "THINK DIFFERENT" mark and Swatch's "Tick different" mark. She found that while there were some visual and aural differences, the marks were conceptually similar in evoking the idea of "being different".
- Similarity of goods/services: The Hearing Officer found that the goods and services covered by Swatch's applications were identical or highly similar to those protected by Apple's earlier trade mark registration. Both covered a range of electronic devices, computers, and related accessories.
- Likelihood of confusion: Considering the similarity of the marks and the identity/similarity of the goods/services, the Hearing Officer concluded that there was a likelihood of confusion on the part of the public. Consumers could mistakenly believe that Swatch's "Tick different" products were associated with or endorsed by Apple's "Think Different" brand.
The Hearing Officer also considered other factors such as the fame and reputation of Apple's "Think Different" campaign, and the possibility of brand dilution. Ultimately, she found in favor of Apple and rejected Swatch's trade mark applications.
What Was the Outcome?
The Hearing Officer ruled in favor of Apple, upholding the opposition and refusing the registration of Swatch's "Tick different" trade mark applications in Singapore. Swatch's applications were rejected on the basis that the mark was similar to Apple's earlier "THINK DIFFERENT" trade mark, the goods/services were identical or similar, and there was a likelihood of confusion for consumers.
This means that Swatch will not be able to register or use the "Tick different" mark in Singapore, as it was found to be too similar to Apple's well-known "Think Different" brand and slogan. Apple successfully prevented Swatch from encroaching on its intellectual property rights in Singapore.
Why Does This Case Matter?
This case is significant for a few key reasons:
- Protection of famous brands: The decision demonstrates the importance of protecting well-known trade marks, even when the competing mark is not an exact copy. The Hearing Officer recognized the fame and reputation of Apple's "Think Different" campaign and was willing to find Swatch's mark too similar, despite some differences.
- Preventing consumer confusion: The ruling highlights the need to avoid consumer confusion in the marketplace. The Hearing Officer rightly concluded that allowing Swatch's "Tick different" mark would likely lead consumers to mistakenly associate it with Apple's brand.
- Importance of conceptual similarity: While the visual and aural differences between the marks were acknowledged, the Hearing Officer placed significant weight on the conceptual similarity in evoking the idea of "being different". This shows that conceptual similarity can be a key factor in the overall assessment of mark similarity.
- Scope of trade mark protection: The broad scope of Apple's trade mark registration, covering a wide range of electronic goods and accessories, allowed it to successfully oppose Swatch's applications for related products. This underscores the value of obtaining comprehensive trade mark protection.
Overall, this case provides useful guidance on the assessment of trade mark similarity and the factors that can lead to a finding of likelihood of confusion, even when the competing marks are not identical. It demonstrates the importance of robust trade mark protection for famous brands.
Legislation Referenced
- Trade Marks Act (Cap 332, 2005 Rev Ed)
Cases Cited
- [2018] SGIPOS 1
- [2018] SGIPOS 12
- [2018] SGIPOS 15
- [2018] SGIPOS 2
- Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide [2014] 1 SLR 911
Source Documents
This article analyses [2018] SGIPOS 15 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.