Why there is no iWatch

06 10 2016

In a world full of iPhones, iPads and iMacs, Swiss watchmaker, Swatch, has successfully partially opposed Apple’s attempt to trade mark “iWatch” in the UK.

In March 2014, Apple filed a trade mark application with the UK Intellectual Property Office for “iWatch” in relation to a number of goods and services, including: computer software, wireless communication devices and GPS devices. This application was opposed by the Swiss watch company, Swatch Group; the owners of Swatch as well as a number of other well-known watch brands such as Omega, Tissot and Logines.

Swatch’s Argument

Swatch relied on its International (EU) trade mark registrations for the terms “iSWATCH” and “SWATCH” as well as their UK trade mark registration “SWATCH” to argue that Apple’s “iWatch” trade mark was identical or similar to their existing trade marks and that use of the “iWatch” mark would allow Apple take unfair advantage of Swatch’s reputation.

Apple’s Argument

Apple responded to these claims arguing that they had a “family of 23” previously registered ‘i’ marks which had created a public association between ‘i’ products and the Apple brand and therefore the use of “iWatch’” would not cause confusion with Swatch’s existing trade marks.

IPO Decision

The IPO found in favour of Swatch in relation to almost all of the goods and services which were opposed. This means that should Apple now wish to use term “iWatch” in UK, it can only do so in relation to certain products, namely: computer software, security devices, computer peripherals and any parts, components and cases for these products.

The UK IPO decision comes more than a year after Apple launched its ‘Apple Watch’ in April 2015. At the time, the decision to not use the name “iWatch” was met with some confusion as to why Apple had chosen to move away from its ‘i’ franchise – especially having already filed for the “iWatch” trade mark in a number of countries in 2013. However, it’s now clear that this decision was likely made in part due to the problems securing the name across all major markets.

This case is just an example of the problems global brands can encounter when releasing new products. As trade marks are territorial, trade mark rights need to be secured in each country in which protection is sought. This means that brands need to ensure that the trade mark they intend to use is available in each key market before they can be confident in naming their products, . For some of the world’s largest brands, like Apple, this can be a mammoth task which sometimes means going back to the drawing board.

While they may not have secured “iWatch” in all of the classes they had sought, this hasn’t stopped Apple from being a dominant player in the smart watch market; having just recently released their newest smart watch upgrade, the Apple Watch Series 2, on 16 September 2016.

Image courtesy of Apple

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