In Apple Inc. v Swatch AG (Swatch S.A.) (Swatch Ltd.) [2018] SGIPOS 15, Apple Inc. (the ‘Opponent’) opposed the application to register the mark ‘Tick Different’ (the ‘Application Mark’) in Classes 9 and 14 made by Swatch AG (‘the Applicant’).

The Opponent contended that the mark’s registration should be refused due to similarity with its earlier mark ‘THINK DIFFERENT’ registered in Class 9 in 1999 – following Section 8 (2) (b) of the Singapore Trade Marks Act, which prohibits the registration of a mark which is similar to an earlier mark, registered in respect of identical goods or services and where, because of this, there exists a likelihood of confusion on the part of the public. 

The Opponent further contended that the mark should be refused registration under Section 8 (4), as its earlier mark was well-known in Singapore and that the similarity of the Application Mark would indicate a connection between the goods and services associated with the marks likely to damage the interests of the Opponent.

Finally, the Opponent argued that the mark should be refused registration under Section (8) (7) (a) on grounds of passing off, and Section (7) (6) on grounds of bad faith. 

The Registrar assessed the similarity between the two marks using the established three- element test set out in Staywell Hospitality Group Pty Ltd v. Starwood Hotels & Resorts Worldwide, Inc [2014] 1 SLR 911 – that of visual, aural and conceptual similarity.

The marks were found by the Registrar to be more dissimilar than similar visually. The Registrar held that the average consumer would visually signal the difference between the words ‘Tick’ and ‘THINK’ – assisted by the upper- and lower-case lettering.

The Registrar also held that the marks were aurally more dissimilar than similar. The different pronunciations of the words ‘Tick’ and ‘Think’ were ‘clear and not likely to be slurred’ by the average consumer. Lastly, the Registrar also found that the marks were conceptually dissimilar. ‘Tick Different’ and ‘THINK DIFFERENT’ do not implore the consumer to perform a similar action. 

The lack of similarity between the two marks was a factor significant enough to dispose of all of the grounds of opposition. Sections 8 (2) (b) and 8 (4) expressly require similarity between the two marks to be applied. The ground of passing off under Section 8 (7) (a) could not be established – as the marks were not similar, there was no misrepresentation.

Finally, the ground of bad faith under Section (7) (6) was also dismissed. The Opponent had claimed that the Applicant could not be said to be the bona fide proprietor of the Application mark; it had merely applied to register it in order to ride upon the opponent’s goodwill and reputation. Given that similarity was absent, the Registrar found no possibility of benefit to the Opponent through favourable association.