Swatch AG (Swatch SA) v Apple Inc (68438/2016) [2018] ZAGPPHC 966 (31 May 2018)

Swatch AG (Swatch SA) v Apple Inc (68438/2016) [2018] ZAGPPHC 966 (31 May 2018)

The court found that the determination of confusing similarity between SWATCH and IWATCH depended on a holistic comparison of the marks, considering their visual, aural, and conceptual aspects. The court accepted that SWATCH is an ordinary English word and that the word 'watch' has lost its identity within it. The marks differ in pronunciation and conceptual meaning, with SWATCH being monosyllabic and IWATCH pronounced 'eye-WATCH'. The court held that the similarities in the last five letters do not outweigh the differences in the overall impression of the marks. The court also found that not all electronic goods in Class 9 are similar to horological instruments and that exclusive rights...

Citation
[2018] ZAGPPHC 966
Parties
Applicant: Swatch AG (Swatch SA); Respondent: Apple Inc.
Court
North Gauteng High Court, Pretoria
Jurisdiction
South Africa
Judgment Date
31 May 2018
Case Number
68438/2016
Procedural Posture
Review Application / Opposition to Trademark Registration Transferred From Registrar to High Court
Outcome
The opposition is dismissed with costs awarded to Apple Inc.
Judges
Fabricius
Legal Topics
Trademark Opposition, Confusing Similarity, Passing Off, Likelihood of Deception, Distinctive Character, Comparison of Marks
Intellectual Property Trademark Opposition Confusing Similarity Passing Off Likelihood of Deception Distinctive Character Comparison of Marks

Case Brief

Summary, issues, holding and outcome

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Parties

Swatch AG (Swatch SA)

Applicant

Apple Inc.

Respondent

Procedural Posture

Review Application / Opposition to Trademark Registration Transferred From Registrar to High Court

Legal Issues

  1. 1 Whether the trademarks SWATCH and IWATCH are confusingly similar for the purposes of the Trade Marks Act.
  2. 2 Whether registration of IWATCH by Apple would be likely to deceive or cause confusion among consumers.
  3. 3 Whether the goods covered by Apple's applications are identical or similar to those covered by Swatch's registrations.

Ratio Decidendi

The court found that the determination of confusing similarity between SWATCH and IWATCH depended on a holistic comparison of the marks, considering their visual, aural, and conceptual aspects. The court accepted that SWATCH is an ordinary English word and that the word 'watch' has lost its identity within it. The marks differ in pronunciation and conceptual meaning, with SWATCH being monosyllabic and IWATCH pronounced 'eye-WATCH'. The court held that the similarities in the last five letters do not outweigh the differences in the overall impression of the marks. The court also found that not all electronic goods in Class 9 are similar to horological instruments and that exclusive rights...

Court Disposition

The opposition is dismissed with costs awarded to Apple Inc.

Orders

  • The opposition to the registration of the IWATCH trademark is dismissed.
  • Swatch AG is ordered to pay the costs of the opposition.