Friday 22 May 2015

General Court decides the time has come to limit the scope of protection for the watch brand, SWATCH

From Wikimedia Commons
Three days ago the General Court issued its judgment (Case T-71/14) upholding the grant of the SWATCHBALL trademark filed by Panavision Europe for goods and services relating to a company involved in the manufacture and sale of photographic and movie equipment (Classes 9, 35, 41, and 42). As an added quirk, the application expressly excluded goods and services relating to timekeeping.

The famous Swiss watch-making company Swatch AG opposed the application on grounds that it was confusingly similar to their earlier trademark registrations for SWATCH and that it was an attempt to take unfair advantage of the repute of their earlier mark. They also claimed that SWATCHBALL was detrimental to the distinctive character and repute of the earlier mark.

The Court concurs that the conflicting marks are similar and accepts the well-known character and reputation of the SWATCH marks. Nevertheless, the Court has found that for registration to be barred under Article 8.5 Regulation 207/2009, the relevant public must establish a link between the two marks and that absent such a link, the distinctive character and repute of the earlier mark cannot be taken advantage of or harmed.

While the Court acknowledges that certain factors (the similarities between the marks and the reputation of the SWATCH mark) support the conclusion that a link might exist, it has held that any such link is diluted by the differing natures of the goods and services covered (especially bearing in mind Panavision's limitation); by the different distribution channels and market segments; by the non-competitive nature of the goods, which are not interchangeable; and, above all, by the existence of two separate relevant publics,  the general public in the case of SWATCH watches and a much more specialized public in the case of Panavision's goods and services.

In point of fact, the Court has found that even though the specialized public for Panavision's goods is likely to be aware of the SWATCH branded goods, the public is still unlikely to draw a link between the goods or between the SWATCHBALL and SWATCH marks.

This judgment shows that even the most famous trademarks need to make strenuous efforts to prove that the requisite link exists, since the bar to registration laid down in Article 8.5 is contingent on the existence of such a link for well-known and reputed trademarks to be able to exert their full effect.

Author: Luis Baz

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