Explainer: Why Swatch failed to block Apple’s ‘iWatch’ trademark
Information from the Global Brand Database of the World Intellectual Property Organization shows that Apple holds the “iWatch” trademark in Chile, Mongolia, Singapore and Switzerland, and has applications pending in Denmark, Iceland, Israel, New Zealand and Tunisia.
SINGAPORE — American tech giant Apple successfully registered its “iWatch” trademark in Singapore on Wednesday (Jan 23), after the Intellectual Property Office of Singapore (Ipos) ruled against Swiss watchmaker Swatch’s opposition.
Swatch had opposed Apple’s registration in 2016 on grounds that it was confusingly similar to their two earlier marks, “iSwatch” and “Swatch”.
However, Apple’s recent success does not mean Singaporeans will soon see a rebranding of Apple Watches to iWatch, which was widely speculated to be the official name before their launch.
This is because Apple applied for trademark protection for “iWatch” for classes of goods including computers, computer hardware, computer peripherals and wireless communication devices — but not for watches or smart watches.
If Apple were to rebrand its Apple Watch to iWatch, the name would not be protected under the trademark.
To be sure, registering a trademark is not a prerequisite for use under Singapore law. But it does grant ownership of the mark and prevents others from using a similar or identical mark without the owner’s permission.
A similar case over the “iWatch” trademark happened in the United Kingdom in 2014 between Swatch and Apple. Trademark protection is territorial in nature, so a company has to apply for it in every country it wishes to secure a trademark.
Two years later, the UK Intellectual Property Office ruled in favour of Swatch, and Apple was unable to trademark the name “iWatch” in the UK.
However, Apple had already launched its new smart watch under the name “Apple Watch” the year before.
Information from the Global Brand Database of the World Intellectual Property Organization shows that Apple holds the “iWatch” trademark in Chile, Mongolia, Singapore and Switzerland, and has applications pending in Denmark, Iceland, Israel, New Zealand and Tunisia.
WHAT WERE THE ARGUMENTS FROM EACH SIDE?
Making their arguments to Ms Sandy Widjaja, Ipos’ principal assistant registrar of trade marks, lawyers for Swatch argued that the “iWatch” is similar to its earlier marks, “Swatch” and “iSwatch”.
Ms Vithyashree and Mr Ho Jia Hui from law firm Ella Cheong argued that the class of goods for Apple’s applied mark covered smart watches — which are effectively wearable computers with wireless connectivity.
Swatch is a subsidiary of the Swatch Group, which owns a number of other watch brands, including Omega, Tissot, Longines and Rado.
Ms Widjaja said she was of the view that a smart watch is “in essence a watch which also performs a myriad of functions”, and that the functions of a smart watch are but second to its core function of telling time.
Thus, she said that the class for which the “iWatch” mark was registered under would not cover smart watches.
Apple, represented by Ms Eunice Maaland from Drew & Napier, argued that the public has come to recognise that the “iWatch” mark belongs to the same family of products as the iPhone, iPad and iPod, for which Apple owns trademarks.
This is because of the prefix “i”, although Ms Maaland noted that Apple is not monopolising the letter “i” and that "there are indeed other marks beginning with the letter 'i'".
WHAT WAS THE FINAL DECISION?
In her grounds of decision, Ms Widjaja found that the unregistered “Swatch” mark was more dissimilar than similar to the “iWatch” mark.
She found that the registered “iSwatch” mark, with a stylised “i”, was “similar to a low extent”.
But consumers of smart watches “would be a discerning group of consumers, tech-savvy and fashion-conscious”, and there is no likelihood of confusion, she said.
Smart-watch buyers pay “a greater degree of fastidiousness and attention”, said Ms Widjaja. “After all, a smart watch is a highly personal item which blends function and style.”
