On 24 January 2019, the Intellectual Property Office of Singapore (“IPOS”) delivered its written judgement dismissing an opposition filed by Swatch AG (“SWATCH”) for the registration of the mark “IWATCH” filed by Apple Inc. (“Apple”).
Swatch based its opposition on the grounds that “IWATCH” was confusingly similar to its earlier marks, “SWATCH” and “ ”, and that the description of goods Apple applied for was similar to the goods for which Swatch has protection.
Apple’s application for the mark “IWATCH” was filed for description of goods covering computer software, computer hardware and related products under class 09, but not for smart watches.
With regard to the similarity to the goods for which Swatch has protection, Swatch raised arguments that there is a close similarity and overlap between smart watches and conventional watches, and thus the goods of both companies are in direct competition.
Swatch argued that smart watches are essentially wearable computers due to similarity in functions and so would fall within the description of computer software, computer hardware and related products. Hence, there is likelihood of confusion.
Apple contended that as many Apple products begin with “i” and consumers would recognise ‘IWATCH’ as belonging to the same umbrella of gadgets.
The Principal Assistant Registrar at IPOS, Sandy Widjaja opined that a smart watch would not fall within the goods applied for by Apple because the numerous functions of a smart watch is ancillary to its core function of telling the time.
She added that smart watches tend “to command a greater degree of fastidiousness and attention” as a “smartwatch is a highly personal item which blends functions and style”.
In reaching her conclusion, the Registrar’s analysis on the similarity between the marks was as follows:
The Registrar was of the view that the extent of the similarity between both marks was low and that the worldwide reputation of Swatch reduces the likelihood of confusion. As such, the Registrar concluded that the Opposition filed by Swatch failed on all grounds and the mark “IWATCH” was allowed to proceed for registration.
Smart Watches by Apple are already in the Singapore market and are branded as “Apple Watch”.
This article first appeared in the INTA Bulletin Vol 74, No. 5. For more information please visit http://www.inta.org/INTABulletin/Pages/INTABulletin.aspx