Swatch fails to prevent registration of ICE WATCH

The Patent Office and the Board of Appeal have come to the same conclusion in opposition proceedings, but with a different reasoning.

In Swatch SA Switzerland v Ice SA Belgium (Case 8/2013, January 14 2014), Ice SA Belgium sought to register the figurative mark ICE WATCH (International Registration 1029087, depicted below) for "precious metals and their alloys and goods in precious metals or coated therewith not included in other classes; jewellery, precious stones, timepieces and chronometric instruments" in Class 14 of the Nice Classification:

The issue was whether ICE WATCH was similar to Swatch SA Switzerland's trademarks:

• SWATCH (No 28/1989, depicted below) for the entire class heading of Class 14:
  
• SWATCH (International Registration No 506123, depicted below) for "precious metals and their alloys and goods in precious metals or coated therewith (excluding cutlery); jewellery, precious stones; clocks and watches and other chronometric instruments" in Class 14:
  
• ISWATCH (International Registration No 962366, depicted below) for "precious metals and their alloys and goods in precious metals or coated therewith not included in other classes, jewellery, precious stones; horological and chronometric instruments" in Class 14, "retail trading of horological products and jewellery; retail trading via global networks of computers (Internet) of horological products and jewellery" in Class 35 and "repair and maintenance of horological products and jewellery" in Class 37:
  

The Patent Office rejected the opposition. First, it stated that the goods were identical and that all the marks included the term 'watch' at the end. The Patent Office stated that the mark applied for:

"includes two words, 'ice' and 'watch'. The words are presented in two parts divided by a line. The word 'ice' is written in bold letters and above the letter 'i' there is a circle that has been divided into three parts with a triangle attached. The opponent’s mark, on the other hand, includes the stylised word 'swatch' and, while this word has no particular meaning, it is not devoid of any conceptual content since it points to the origin of the goods in Switzerland. The marks will be pronounced as one word. It is the opinion of the Patent Office that, although the marks have the word 'watch' in common, the visual similarity is not so evident that a danger of confusion exists."

The Patent Office did not consider that there was any aural similarity between the trademarks ICE WATCH and SWATCH.

Regarding ICE WATCH and ISWATCH, the Patent Office was of the opinion that they would both be pronounced “as in English”; in light of the common knowledge of English in Iceland, the marks were aurally similar. However, despite the similarity of the goods and the aural similarity of the marks, the lack of visual similarity was decisive and excluded any danger of confusion.

Finally, the Patent Office stated that the fact that the opponent’s mark was well known did not affect the decision, since the marks were dissimilar.

The opponent appealed, but the Board of Appeal dismissed the appeal.

The board first noted that it is a fundamental condition for the registration of a trademark that it be capable of distinguishing the goods/services of one party from those of others (see Article 2 of the Trademarks Act). Under Article 14, Paragraph 1, Item 6 of the act, trademarks are considered to be confusingly similar if consumers are likely to confuse the goods/services of different parties, or to consider that the goods/services of different parties have the same business origin, due to the similarity of the marks.

Further, the board noted that, when evaluating whether marks are confusingly similar, two basic points should be considered: the similarity of the goods and the similarity of the marks. However, these similarities should always be considered in context.

With regard to the goods, the following (among others) should be taken into account:

• whether the goods are similar;
• whether the target group is the same; and
• whether the goods compete on the market.

With regard to confusing similarity, the deciding factor should be the overall impression that the marks leave in the mind of consumers. The visual, aural and conceptual similarity should be assessed.

The Board of Appeal pointed out that the marks covered the same goods in Class 14. The board referred to the reasoning of the Patent Office that there was a low visual similarity despite the common word 'watch'.

The board then held that, even if the word 'watch' was considered to be the weak element of the marks ICE WATCH and ISWATCH, this word would nevertheless affect their visual similarity. Consequently, there was a certain visual similarity between the marks of the parties. However, due to the graphical elements of the marks, the visual similarity was not “considerable”.

The board did not agree with the Patent Office's finding that there was no aural similarity between the marks SWATCH and ICE WATCH, but only between ISWATCH and ICE WATCH. In the opinion of the board, SWATCH and ICE WATCH were also similar aurally due to the limited difference in pronunciation.

With regard to conceptual similarity, the board stated that "the word 'swatch' has no specific meaning, but is not totally devoid of meaning since it refers to the origin of the goods in Switzerland (ie, to Swiss watches). The same does not apply to the defendant’s mark". In the ICE WATCH mark, the word 'watch' had a clear meaning, and the word 'ice' was understood as referring to frozen water, thereby implying purity and freshness. The board stated that 'ice' was not understood as referring to the origin of the goods (ie, a reference to Icelandic watches).

The Board of Appeal concluded that, although the goods were similar, the marks were similar aurally and had a certain visual similarity, the overall impression conveyed by the marks was dissimilar. Therefore, there was no danger of confusion under Items 6 and 8, Paragraph 1, Article 14 of the act.

The Board of Appeal thus upheld the decision of the Patent Office. The Patent Office had differentiated between ICE WATCH and ISWATCH on the one hand, and ICE WATCH and SWATCH on the other with regard to aural similarity, but the board disagreed and considered that aural similarity existed in both instances.

In the reasoning of the board, the emphasis was on the words “a certain visual similarity”. Accordingly, the low degree of visual similarity was considered to outweigh the similarity of the goods and the aural similarity of the marks. The reasoning relating to the conceptual elements of the marks is not very clear, and it could be understood that the main basis for the decision is the difference in graphical representation of the marks.

In Iceland, the Patent Office conducts a examination on relative grounds prior to registration. After registration, owners of registered trademarks are able to file oppositions.

Valborg Kjartansdóttir, Sigurjónsson & Thor, Reykjavík