Swatch AG (Swatch SA) v Apple Inc (1320/2018) [2021] ZASCA 11; 2021 (3) SA 507 (SCA); 2021 BIP 9 (SCA); [2021] HIPR 158 (SCA) (29 January 2021)

Swatch AG (Swatch SA) v Apple Inc (1320/2018) [2021] ZASCA 11; 2021 (3) SA 507 (SCA); 2021 BIP 9 (SCA); [2021] HIPR 158 (SCA) (29 January 2021)

The court found that, upon visual, aural, and conceptual comparison, IWATCH and SWATCH are sufficiently distinct. The common element 'WATCH' is descriptive and does not confer exclusivity. The prefixes 'I' and 'S' provide clear differentiation, and the marks do not sound alike. The likely consumers of the products are discerning and brand-conscious, further reducing the risk of confusion. The existence of Apple's i-prefixed family of trade marks was noted but not decisive. The appeal was dismissed as Swatch failed to establish that the marks are confusingly or deceptively similar under the Trade Marks Act.

Citation
[2021] ZASCA 11
Parties
Appellant: Swatch AG (Swatch SA); Respondent: Apple Inc.
Court
Supreme Court of Appeal
Jurisdiction
South Africa
Judgment Date
29 January 2021
Case Number
1320/2018
Procedural Posture
Civil Appeal / Appeal From the Gauteng Division of the High Court, Pretoria
Outcome
Appeal dismissed with costs.
Judges
Wallis, Mocumie, Makgoka, Gorven, Unterhalter
Legal Topics
Trade Marks, Likelihood of Confusion, Descriptive Use Exception, Visual Aural Conceptual Comparison
Intellectual Property Trade Marks Likelihood of Confusion Descriptive Use Exception Visual Aural Conceptual Comparison

Case Brief

Summary, issues, holding and outcome

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Parties

Swatch AG (Swatch SA)

Appellant

Apple Inc.

Respondent

Procedural Posture

Civil Appeal / Appeal From the Gauteng Division of the High Court, Pretoria

Legal Issues

  1. 1 Whether the trade marks IWATCH and SWATCH are confusingly or deceptively similar.
  2. 2 Whether the registration of IWATCH should be refused under ss 10(12), 10(14), and 10(17) of the Trade Marks Act 194 of 1993.
  3. 3 Whether the similarity of goods covered by the marks increases the likelihood of confusion.

Ratio Decidendi

The court found that, upon visual, aural, and conceptual comparison, IWATCH and SWATCH are sufficiently distinct. The common element 'WATCH' is descriptive and does not confer exclusivity. The prefixes 'I' and 'S' provide clear differentiation, and the marks do not sound alike. The likely consumers of the products are discerning and brand-conscious, further reducing the risk of confusion. The existence of Apple's i-prefixed family of trade marks was noted but not decisive. The appeal was dismissed as Swatch failed to establish that the marks are confusingly or deceptively similar under the Trade Marks Act.

Court Disposition

Appeal dismissed with costs.

Orders

  • The appeal is dismissed with costs.