Swatch (WIPO no. 506 123) / Ice Watch (WIPO no. 1 029 087) – Second Time Comes the Charm?

January 22nd, 2016 | Posted by Claude-Etienne Armingaud in Intellectual Property | Trademarks

On October 6 2015, the Commercial Division of the French Supreme Court (“Cour de Cassation”) confirmed the refusal of Paris Court of Appeal to register the “Ice Watch” trade mark. This decision follows the 2008 co-existence agreement concluded between the respective owners of the “Swatch” trademark and the “Ice Watch” business

Divergences upon the interpretation of this agreement led Swatch to oppose the designation of both the French and European territories in the January 7, 2010 application of the international trade mark “Ice Watch” before the French and Community trademark offices (respectively, the “INPI” and the “OHIM”)

On February 13, 2013, INPI Director rejected the opposition relating to the French territory. A week later, the OHIM welcomed the opposition for the European territory on the ground of Article 8.1.b of the Community Trademark Regulation and the likelihood of confusion by phonetic association of both signs and the strong distinctiveness
of the earlier “Swatch” trademark. The French decision was subsequently appealed and led to the cancellation of the
INPI Director’s decision, on the ground of similarities from the overall impression given by comparison of the signs

The Court of Appeal deemed that graphic elements of “Ice Watch” were subsidiary and did not allow a sufficient
distinction between the signs, potentially resulting in confusion on the part of relevant consumers, notably given the
reputation of the earlier trademark.

The Court considered that the applied trademark would therefore benefit from the notoriety of the earlier trademark.
The French Supreme Court confirmed this position, highlighting the dominance of the verbal components of the word
and figurative signs “Ice Watch” and the analysis based on the overall impression created by both signs. In the
meantime, the parties entered into a new co-existence agreement, which may as well end the legal developments… until the next divergence of interpretation of this agreement. Only time will tell!

First publication: K&L Gates Trademark and Unfair Competition Bulletin, 01/2016 with Audrey Decima

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