On 19 May 2015 judgment was handed down by the Court of Justice of the European Communities on the appeal of Swatch AG against a decision of the Office for Harmonisation in the Internal Market (“OHIM”) that Panavision Europe Limited’s Mark SWATCHBALL did not take unfair advantage of the SWATCH marks registered by the Swiss Watchmaker.
Panavision sought registration of SWATCHBALL for goods and services in relation to electronic publications and computer software for lighting and photographic equipment and cinematic and televisual effects in classes 9, 35, 41 and 42 and the application was published in the Community Trade Marks Bulletin in June 2008. Notably the scope of the mark applied for did not extend to goods and services relating to timekeeping. A Notice of Opposition was filed by Swatch AG in September 2008 based on its SWATCH word and device marks registered in several classes, naturally including class 14 (movements for clocks and watches).
Swatch’s opposition was rejected in its entirety and it therefore appealed to OHIM in March 2012. In November 2013 the Appeal was dismissed. The further Appeal to the CJEC sought an annulment of the Appeal Board’s decision and an Order that OHIM should pay Swatch’s costs.
The CJEC considered the conditions to be met before a trademark application could be refused on the basis of similarity to an earlier mark and a likelihood of confusion which were:-
- the marks at issue must be identical or similar;
- the earlier mark must have a reputation; and
- there must be a risk that use of the mark applied for would take unfair advantage of the character or repute of the earlier mark.
all those requirements have to be met.
The Appeal Court accepted that the signs at issue were similar to an average degree and it was not contested that the SWATCH marks had a particularly strong reputation. The assessment made by the Court therefore turned on the third condition which is that the reputation in SWATCH would be adversely affected by SWATCHBALL. The Court found that the goods and services marketed by Panavision targeted a specialist public in the field of lighting, optical lighting and photographic equipment, that would be unlikely to come across SWATCH products in the same shops. There was a limited degree of closeness between the respective goods and services but they had different distribution channels and were neither interchangeable nor in competition with each other, serving very different purposes.
The outcome was that Swatch AG was not able to oppose the SWATCHBALL mark and was ordered to pay the costs of Panavision Europe and OHIM.
This serves as a timely reminder that specialist advice is required on trademarks and other intellectual property assets. For guidance on trade mark registration how best to protect your intellectual property against unfair competition and passing off contact Tony Catterall, Head of the Intellectual Property Team at Taylors, on 01254 297900 or via email at email@example.com. Taylors is the only North West based firm to have been appointed as a legal affiliate to the National organisation Anti Copying In Design (“ACID”).