The Second Bite of the Apple

Following Swatch’s success in opposing Apple Inc’s trade mark application for IWATCH (see our report here), Apple is back for a second bite of the apple against Swatch.

It has been reported that Apple has recently filed a complaint with the Swiss Federal Administrative Court over Swatch’s use of the slogan ‘Tick Different’. Apple argues that Swatch is unfairly referencing tech giant’s successful 1990s ‘Think Different’ campaign. In order to win the case, Apple must show that Swatch's use of the phrase triggers an association with Apple products in the minds of at least 50% of consumers. We understand this matter is still ongoing at the Swiss Federal Administrative Court.

It is interesting that Apple has brought proceedings in Switzerland, although a quick look at the EUIPO register may explain the reasons. Apple owns three registered EUTMs for “Think Different” and Swatch, unsurprisingly, has brought cancellation proceedings against all three EUTMs. It is possible that Swatch has brought these EUTM administrative proceedings as a tactic to delay infringement proceedings in EU countries – the so-called ‘EUIPO torpedo’.

If this has happened, it is certainly not an ideal situation for Apple. Brand owners who hold only EUTMs will want to make certain that they have the ability to bring infringement proceedings in EU countries, including the UK. To do this, they should consider obtaining separate national trade mark registration in their key territories. This could be a crucial advantage in a court action and help in avoiding the EUIPO torpedo. In this case, it is noted that Apple does not own any national UK trade mark registrations for ‘Think Different’ and therefore impeded in taking action in the UK by the EU cancellation proceedings.

If you would like to discuss any of the above, please feel free to get in touch with the author or your usual Stobbs advisor.

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