Case Details
- Citation: [2019] SGIPOS 1
- Court: Intellectual Property Office of Singapore
- Date: 2019-01-15
- Judges: Ms Sandy Widjaja, Principal Assistant Registrar of Trade Marks
- Plaintiff/Applicant: Apple Inc.
- Defendant/Opponent: Swatch AG (Swatch SA) (Swatch Ltd)
- Legal Areas: Trade marks and trade names – Opposition to Registration
- Statutes Referenced: Trade Marks Act
- Cases Cited: [2009] SGCA 13, [2014] SGIPOS 3, [2017] SGIPOS 12, [2018] SGHC 238, [2018] SGIPOS 16, [2019] SGIPOS 1
- Judgment Length: 49 pages, 18,127 words
Summary
This case involves a trade mark opposition filed by Swatch AG (Swatch SA) (Swatch Ltd) ("the Opponent") against Apple Inc.'s ("the Applicant") application to register the trade mark "IWATCH" in Singapore. The Opponent relied on several of its earlier registered and unregistered "SWATCH" trade marks, arguing that the Applicant's "IWATCH" mark is similar and would cause a likelihood of confusion among consumers. The Intellectual Property Office of Singapore ("IPOS") had to determine whether the opposition should succeed under the relevant sections of the Trade Marks Act.
What Were the Facts of This Case?
The Opponent is a subsidiary of the Swatch Group, a world leader in the watch industry with well-known brands like SWATCH, OMEGA, TISSOT, LONGINES and RADO. The Opponent's SWATCH products were first launched in 1983 and have since become successful worldwide due to their technological innovation and distinctive designs.
The Applicant, Apple Inc., originally filed the "IWATCH" trade mark application through its affiliate Brightflash USA LLC in 2013. The application was later assigned to Apple in 2017. Apple and Brightflash have been in a licensor-licensee relationship for the "IWATCH" mark portfolio since 2013.
The Opponent opposed the registration of the "IWATCH" mark, relying on its earlier registered and unregistered "SWATCH" trade marks. The key issue was whether the "IWATCH" mark is similar to the Opponent's earlier marks and would cause a likelihood of confusion among consumers.
What Were the Key Legal Issues?
The key legal issues in this case were:
- Whether the "IWATCH" mark is similar to the Opponent's earlier "SWATCH" marks under Section 8(2)(b) of the Trade Marks Act, such that there exists a likelihood of confusion among consumers.
- Whether the "IWATCH" mark should be refused registration under Section 8(4) of the Act for being similar to the Opponent's well-known "SWATCH" marks.
- Whether the registration of the "IWATCH" mark should be refused under Section 8(7)(a) of the Act for being contrary to law.
How Did the Court Analyse the Issues?
The Registrar first examined the issue of similarity of marks under Section 8(2)(b), applying the three-step test laid out in the Staywell case:
- Assessing the similarity of the marks themselves, considering visual, aural and conceptual similarity.
- Assessing the similarity of the goods/services covered by the marks.
- Considering the likelihood of confusion among the relevant segment of the public, taking into account the similarity of the marks and goods/services.
On the first element, the Registrar found that the "IWATCH" mark is visually and aurally similar to the Opponent's "SWATCH" marks, as they share the common "WATCH" element. Conceptually, the marks were also found to be similar as they both evoke the idea of a watch. The Registrar held that the "IWATCH" mark has a reasonable degree of technical distinctiveness, though less than the highly distinctive "SWATCH" mark.
On the second element, the Registrar noted that the Applicant's goods covered by the "IWATCH" mark, while not including "smart watches" per se, were still similar to the Opponent's watches and watch-related goods.
Considering the two elements together, the Registrar concluded that there is a likelihood of confusion among the relevant public, who are average consumers exercising some care and good sense. The Registrar found that the similarities between the marks and goods would likely lead the public to believe the goods originate from the same or economically-linked undertakings.
The Registrar then considered the Opponent's arguments under Sections 8(4) and 8(7)(a), but ultimately found them unpersuasive. The Opponent failed to show that its "SWATCH" marks are well known in Singapore to the extent required under Section 8(4). The Registrar also found no basis to refuse registration under Section 8(7)(a) for being contrary to law.
What Was the Outcome?
The Registrar upheld the Opponent's opposition under Section 8(2)(b), finding that the "IWATCH" mark is similar to the Opponent's earlier "SWATCH" marks and there exists a likelihood of confusion among consumers. As a result, the Registrar refused the registration of the "IWATCH" mark.
Why Does This Case Matter?
This case provides useful guidance on the assessment of similarity between trade marks under Section 8(2)(b) of the Trade Marks Act. It reaffirms the three-step test laid out in the Staywell case and emphasizes the importance of considering the overall impression and distinctive elements of the marks, rather than just a quantitative analysis.
The case also highlights the high threshold required to establish that an unregistered mark is "well known" under Section 8(4), which the Opponent was unable to meet here. This sets a precedent for future oppositions based on well-known unregistered marks.
Overall, the decision demonstrates the Registrar's careful and nuanced approach to balancing the competing interests of trade mark owners. While the Opponent succeeded on the key ground of likelihood of confusion, the Registrar rightly rejected the other grounds of opposition that were not sufficiently substantiated.
Legislation Referenced
Cases Cited
- [2009] SGCA 13 (Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc)
- [2014] SGIPOS 3
- [2017] SGIPOS 12
- [2018] SGHC 238
- [2018] SGIPOS 16
- [2019] SGIPOS 1
Source Documents
This article analyses [2019] SGIPOS 1 for legal research and educational purposes. It does not constitute legal advice. Readers should consult the full judgment for the Court's complete reasoning.