We note with interest a tranche of thirteen decisions published last week (links below) in non-use revocation actions at the UKIPO by Samsung Electronics of Swatch Group trade mark brands such as Omega, Longines, Swatch etc. They are seeking to revoke the relatively broad Class 9 (electronics inc. smartwatches) and Class 14 (jewellery inc. analogue watches) coverage. 

This is part of the conflict between the Swatch Group and Samsung that had a recent High Court trade mark infringement decision (Montres Breguet SA & Ors v Samsung Electronics Co. Ltd [2022] EWHC 1127 (Ch)) earlier this year. That held Samsung had infringed various Swatch Group trade mark registrations by hosting and allowing the download of various digital watch faces / watch face apps (created by third party developers) from their Samsung Galaxy App store to Samsung smartwatches. The Court held that Samsung did “use” the trade marks in this online context with the trade mark being either on the digital watch face or in the app name. It held there was active behaviour and control (such as promotion of the apps and assistance to the developers and, persuasively to the Court, a clear commercial interest in such apps for its own smartwatches) by Samsung. This was active action rather than them simply being a vehicle (in the form of their app store) on which third party developers provided the (infringing) apps. The Court also held Samsung did not have a defence under the E-Commerce Directive as a host. Samsung was found to have done more than be a merely passive host as they also promoted content and also did not (at the time) have in place appropriate monitoring and take down procedures to address infringing content.   

That infringement decision is under appeal.

These revocation decisions are an interesting side product. Following this decision most of these trade mark registrations (on which the High Court infringement was based) are now reduced down just to “watches” in Class 14 and no longer cover smart watches for example (which Swatch did admit in the High Court case to not having used on). The hearing officer in these decisions notes it is Samsung’s position that therefore the injunction ordered by the High Court was based on overly broad trade registration coverage for which there was no use. The partial revocation of the Swatch registrations down to just watches will not be a silver bullet removing any liability, as watches is still sufficiently similar to the digital watch use for trade mark infringement in my view. This will likely form part of Samsung’s broader appeal.

The UKIPO decisions note the appeal of the High Court infringement decision case is to be heard in early December.

This all feeds into what is an interesting case already, on the interface (no pun intended) between analogue and digital. This case is a useful one for brand owners who often want to tackle the online infringement at the main source (the host) and an important one for those online hosts in relation to the interpretation of use in an online environment and their defences to trade mark infringement by the apps they host. We should all WATCH this space. 

Revocation decisions referred to above: BREGUET O/1053/23, HAMILTON O/1052/23, MIDO O/1051/23, T TOUCH O/1050/23, DE VILLE O/1049/23, SPEEDMASTER O/1048/23, BLANCPAIN O/1047/23, GLASHUTTE O/1046/23, JAQUET-DROZ O/1045/23, LONGINES O/1044/23, TISSOT O/1043/23, OMEGA O/1042/23, SWATCH O/1041/23.