In a recent case, the Swiss Federal Administrative Court was concerned with the question as to whether Apple’s non-registered common law trademark “THINK DIFFERENT” was to be considered a well-known trademark in Switzerland, thereby enabling Apple to oppose the younger trademark registration of “Tick different” by Swatch in Switzerland. Whilst the Court affirmed that Apple’s trademark was well-known in Switzerland during a certain time period and in connection with computers belonging to Class 9, it denied the existence of a well-known trademark in relation to goods belonging to Class 14 at the time of Swatch’s trademark registration. Hence, the Court upheld the decision of the IPI and rejected Apple’s opposition against the trademark registration.
Opposition against a younger trademark registration because of already existing well-known trademark
The origin of the conflict was the registration of the trademark No. 679340 “Tick different” by Swatch on 19 October 2015.
Swatch claimed trade mark protection in relation to goods belonging to Class 14, inter alia watches.
Apple filed an opposition by relying on its earlier trademark “THINK DIFFERENT”, which, according to Apple’s statements, represents a well-known trademark. In its reasoning, Apple contended that both trademarks are visually and phonetically very similar and hence, taking into account the reputation of the opposing mark, a likelihood of confusion exists. However, Swatch contested that the trademark “THINK DIFFERENT” was well-known in Switzerland and requested dismissal of Apple’s objection.
The Swiss Federal Institute of Intellectual Property (IPI) rejected Apple’s opposition. Although Apple successfully proved that it owns a non-registered common law trademark protected by US law, the IPI reasoned that Apple could only rely on a foreign opposition mark if that mark was well-known in Switzerland for the goods claimed. In the eyes of the IPI, the documents submitted by Apple did not provide sufficient evidence that the opposing trademark was well-known in Switzerland.
Apple lodged an appeal against that decision before the Swiss Federal Administrative Court, requesting revocation of the trademark registration “Tick different”. In support of its appeal, Apple presented the following three arguments:
- Apple has been using the slogan “THINK DIFFERENT” for 20 years to advertise and brand its products.
- The mark “THINK DIFFERENT” is a valid non-registered common law trade mark protected by US law.
- In view of Apple’s reputation, the decades of use of that mark in the US and the corresponding media coverage, it was to be affirmed that the mark is well-known in Switzerland.
Swatch rejected these arguments and reasoned that the opposing mark does not qualify as well-known in Switzerland and disputed the existence of a common law trademark pursuant to US law.
Protection of an older non-registered trademark due to well-known character
In its ruling of 15 March 2019 (Case no. B-5334/2016), the Swiss Federal Administrative first examined the well-known character of the opposing mark. At the outset, the Court held that an older trademark is not only the trademark already registered, but also trademarks that are well-known in Switzerland at the time of registration of the younger trademark, in accordance with Art. 6bis of the Paris Convention for the Protection of Industrial Property (Art. 3 para. 2 lit. b TmPA). As a consequence, the Court argued, the owner of an older trademark protected abroad can file an opposition against the registration of a trademark in the Swiss trademark register, provided that the foreign trademark is well-known in Switzerland. Unlike the assessment of a famous trademark, the protection of a well-known trademark is limited solely to certain goods and services. Apple tried to prove the well-known character of the trademark by referring to its own reputation and the prominence of its products. However, the Court noted that it is not the reputation of Apple and its products that is in dispute, but the well-known character of its trademark „THINK DIFFERENT“ with regard to the goods claimed by the contested mark.
Protection of the opposing trademark under US law as a first prerequisite
The Court then proceeded to examine whether the opposing mark was protected under US law at the time of the registration of the younger trademark, as this is a prerequisite in order to enjoy the benefits of the well-known character. The Court held that in the US trademark rights can arise through the use of a trademark, irrespective of its registration. However, the protection of such „common law trademarks“ is limited solely to the goods and services claimed and to the geographical area within the US in which the trademark is used. The evidence submitted by Apple only demonstrated that the trademark „THINK DIFFERENT“ was used in the US in connection with „computers“ belonging to Class 9 and only for a certain time period. However, Apple did not succeed in proving that the trademark was used in connection with the goods claimed belonging to Class 14, particularly watches, at the time the younger trademark „Tick different“ was registered.
Well-known character of the opposing trademark in Switzerland as a second prerequisite
In a second step, the court examined whether the opposing mark is well-known in Switzerland. The court clarified that the use of the trademark in Switzerland is not a requirement. However, a mere vague knowledge of the trademark is not enough. Instead, an increased level of public awareness about the trademark is required, which means that the trade mark must be well-known in at least one of the sectors of the public concerned as a trademark for the goods and/or services it designates. Furthermore, the well-known character of a trademark can only refer to those goods and services for which it is used or advertised.
According to the court, Apple could successfully show the well-known character of the trademark „THINK DIFFERENT“ in Switzerland among specialists from 1998 to the end of 2001 and 2006. However, Apple failed to present any convincing evidence to demonstrate that the opposing mark was still known in Switzerland as a trademark in connection with computers after 2006. Although the slogan “THINK DIFFERENT” was mentioned in the daily press in relation to Steve Jobs’ death, Apple failed to substantiate a domestic or foreign advertising activity after 2001. Even though active use of the trademark in Switzerland itself is not necessary in order to affirm the well-known character of a trademark, the Court emphasized, that a trademark not being used or advertised in Switzerland can, for practical reasons, hardly be well-known in Switzerland. Subsequently, the Court held that even if a trademark used to have well-known character during a certain time in the past, it can lose its former public awareness over time. Accordingly, the Court requires that the relevant sectors of the public must have constant knowledge of the trademark, mere sporadic reporting, as in the present case, cannot meet that requirement. Since Apple failed to meet the stringent requirements in order for its trademark to be considered as well-known in Switzerland, the Court ultimately rejected its claim.
The ruling of the Court illustrates that well-known trademarks do not enjoy comprehensive protection for all goods and services. The trademark protection they enjoy is strictly limited to specific goods and services. Not only must the trademark in question be used in connection with the specific goods and services, but it must also be shown that the trademark is well-known in the relevant territory at the time of the trademark registration of the younger trademark. As can be derived from the findings of the Court, the threshold for being considered a well-known trademark is high and requires substantiated evidence.