The General Court (GC) has rejected an opposition by Swatch AG to an application for the mark SWATCHBALL on the basis of its reputation in the mark SWATCH because there was no evidence that the relevant consumers would make a link between the marks SWATCH and SWATCHBALL.
The SWATCHBALL application
The applicant, Panavision Europe Limited, applied for a Community trade mark (CTM) for the mark SWATCHBALL in classes 9, 35, 41 and 42. The goods and services covered by the application included: "electronic publications and computer software relating to the creation and selection of lighting, optical and other visual effects in cinematographic television, video and other visual performance arts; electronic publications for selection of lens hoods, bellows" along with retail and consultancy services relating to the same. The application restricted the goods and services to those which did not include timekeeping.
The decisions of the Opposition Division and the Board of Appeal
Swatch opposed the application on the basis of various earlier trade marks for the word SWATCH which covered, among other things, watches in class 14.
The Opposition Division rejected the opposition in its entirety and the Board of Appeal dismissed the appeal.
In relation to the grounds of opposition under Article 8(5) CTMR, the Board of Appeal acknowledged that Swatch had established a reputation in the mark SWATCH in France, Germany and Spain in relation to goods in class 14, however, the Board of Appeal considered that the goods and services covered by the application were so different that SWATCHBALL was unlikely to bring to mind the mark SWATCH in the mind of the relevant public. The Board of Appeal also considered that Swatch had failed to prove that the application would cause dilution to, or take unfair advantage of, its earlier trade marks.
The decision of the GC
The GC reiterated that the fact that two marks are similar does not necessarily mean that the relevant public will make a link between them. Furthermore, the GC also pointed out that even if a link is present this does not mean that there will necessarily be injury to the earlier mark.
The GC accepted that the earlier SWATCH marks did enjoy a reputation, however, the GC weighed up all the factors relevant to the question of whether the public was likely to establish a link between the marks SWATCH and SWATCHBALL and concluded that the public was not likely to make such a link.
On the one hand, the GC considered the factors weighing in favour of finding a link between the marks as follows:
- the similarity of the marks at issue; and
- the strength of the reputation of the earlier mark which was considered to be high.
On the other hand, however, various factors weighed against the finding of a link in this instance, including:
- the different nature of the goods and service concerned, including the different distribution channels, the fact that the goods and services are not interchangeable nor in competition with each other and the fact that the goods and services serve very different purposes. This all resulted in a very limited degree of closeness between the goods and services; and
- the existence of two relevant publics.
The GC agreed with the Board of Appeal that while it was possible that the specialist public for the goods and services covered by the application may also be aware of the earlier SWATCH marks, this public will not establish a link between the relevant marks because it is very unlikely that the public will encounter goods covered by the relevant marks in the same shops.
This case highlights the need for consumers to make a link between the marks at issue in cases where the opponent is relying on a mark with a reputation under Article 8(5) CTMR.
This case can be contrasted with earlier cases such as You-Q BV v OHIM where Apple Corps was successful in opposing an opposition for the mark BEATLE for mobility scooters and related goods on the basis of its reputation in the mark BEATLES.
Case details at a glance
- Jurisdiction: European Union
- Decision level: General Court
- Parties: Swatch AG v OHIM, Panavision Europe Ltd
- Citation: T-71/14
- Date: 19 May 2015
- Full decision: dycip.com/swatchball
You-Q BV v OHIM case details: dycip.com/t36910dec