Swatch AG v Apple Inc

Swatch AG v Apple Inc

The evidence did not establish that Swatch intended to use the mark for parodic purposes or in bad faith; mere intention to annoy Apple or lack of clear intention does not amount to bad faith under s3(6). Parody, absent evidence of denigration or dishonest practice, is not sufficient to constitute bad faith in trade mark registration.

Parties
Appellant: SWATCH AG; Respondent: APPLE INC
Jurisdiction
England and Wales
Judgment Date
29 March 2021
Procedural Posture
Appeal From Registrar of Trade Marks / Judgment on Appeal
Outcome
Appeal allowed; opposition under s3(6) rejected.
Legal Topics
Bad Faith Registration, Parody in Trademark, Passing Off, Distinctiveness, Trade Mark Opposition
Intellectual Property Trademark Law Bad Faith Registration Parody in Trademark Passing Off Distinctiveness Trade Mark Opposition

Case Brief

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Parties

SWATCH AG

Appellant

APPLE INC

Respondent

Procedural Posture

Appeal From Registrar of Trade Marks / Judgment on Appeal

Legal Issues

  1. 1 Whether Swatch's trade mark applications for 'ONE MORE THING' were made in bad faith under s3(6) of the Trade Marks Act 1994
  2. 2 Whether Apple had acquired distinctiveness and goodwill in the phrase 'ONE MORE THING' sufficient for passing off under s5(4)(a)
  3. 3 Whether intention to parody constitutes bad faith in trade mark registration

Ratio Decidendi

The evidence did not establish that Swatch intended to use the mark for parodic purposes or in bad faith; mere intention to annoy Apple or lack of clear intention does not amount to bad faith under s3(6). Parody, absent evidence of denigration or dishonest practice, is not sufficient to constitute bad faith in trade mark registration.

Court Disposition

Appeal allowed; opposition under s3(6) rejected.

Orders

  • The Hearing Officer's decision upholding the opposition under s3(6) is set aside.
  • Swatch's trade mark applications proceed.