Despite the worldwide reputation of its trademark “Swatch”, Swatch AG did not succeed in the annulment of the registration of the CTM “SWATCHBALL” owned by Panavision Europe Ltd a company specialised in technical innovation for the motion picture and television industries: this is the outcome of the judgment of the European General Court in the case T-71/14, decision published on 19 May 2015 (for the full text of the decision please click here).
In the Community Trademarks Bulletin of 16 June 2008 was published the Community trademark application filed by Panavision Europe Ltd for the word trademark “SWATCHBALL”. The application was sought for classes 9, 35, 41 and 42 of the Nice Agreement, for goods and services related to motion picture and television industrie (the detailed list is available under paragraph 3 of the decision) .
Promptly Swatch AG filed a notice of opposition against the registration of the “SWATCHABALL” trademark, based on its earlier and well-known trademark “SWATCH”, registered, for the purposes of the opposition also for class 14.
The Opposition Division and the Second Board of Appeal of OHIM rejected the opposition of Swatch AG, who then appealed the decision before the General Court.
However, as said, the General Court dismissed the action of Swatch AG and confirmed the decision of the Second Board of Appeal of OHIM.
More in details, Swatch AG raised a single plea in law, alleging the infringement of Article 8 (5) of Reg. EC no. 207/2009. In this respect, the General Court confirmed its interpretation of the aforesaid article and stressed again the existence of the three cumulative conditions for the application of Article 8 (5). i) the trademarks at issue must be identical or similar; ii), the earlier trademark must have a reputation; iii) there must be a risk that the use without due cause of the trademark applied for, would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier trademark. .
In the case at hand, the General Court confirmed that the “Swatch” trademark met the first and the second requirements, however it did not fulfil the third one, the existence of which is strictly related to whether or not the relevant public establishes a link between the trademarks at hand.
For the General Court, the assessment has to take into account all factors relevant to the circumstances, including “the degree of similarity between the marks at issue; the nature of the goods or services covered by the marks at issue, including the degree of closeness or dissimilarity between those goods or services, and the relevant section of the public; the strength of the earlier mark’s reputation; the degree of the earlier mark’s distinctive character, whether inherent or acquired through use; and the existence of the likelihood of confusion on the part of the public”.
Applying the criteria above to the case SWATCH / SWATCHBALL, the General Court affirmed that the goods and services, to which the trademarks refer, are different – e.g. different distribution channels, no competition between them, different market segments; as a consequence there are two different “relevant publics”: SWATCH targets the general public, while SWATCHBALL targets a specialized public that ” will not establish a link between the marks at issue, since it is highly unlikely that that public will encounter the goods covered by those marks in the same shops or think of the goods covered by one mark when presented with the goods covered by the other mark”.
In the light of the decision of the General Court, it is important to highlight that nor the reputation of an earlier mark nor the similarity between trademarks are sufficient to ground the opposition, if the relevant public does not establish a link between the marks to be compared.