AJ Park successfully represented Swatch AG in a recent High Court appeal brought by the Belgian owners of the trade mark ICE-WATCH. The case highlights just how important initial interest confusion can be in trade mark cases, when the marks look dissimilar and any likely confusion is ultimately corrected at the point of sale.
Swatch AG is of course famous for its trade mark SWATCH, used in relation to watches in New Zealand and around the world for decades. More recently, TKS s.a. introduced its trade mark ICE-WATCH, also used in relation to watches, first in Europe with its products eventually reaching New Zealand shores in the late 2000s. By the time that TKS applied to register its ICE-WATCH trade mark, about 400 watches had been sold here.
Swatch opposed registration of the ICE-WATCH mark, mainly because it considered that the use of the mark on watches would be likely to be deceive or confuse the public, particularly given the well-known reputation of the SWATCH mark for watches. The Assistant Commissioner agreed with Swatch.
On appeal, Justice Ronald Young found that the marks looked dissimilar, and that there wasn’t a common idea shared by the two trade marks. However, His Honour considered that the two trade marks sounded the same. ICE-WATCH could be misheard by a potential purchaser as I-SWATCH, or even ICE-SWATCH. Importantly, the significance of the aural similarities overrode the visual and conceptual differences between the marks.
The Court found that, while the confusion would be likely to be cured at the point of sale by a knowledgeable retail assistant or by signage, that was not enough. A substantial number of persons would be likely to be caused to wonder whether I-SWATCH or ICE-SWATCH was somehow connected to Swatch. The result was significant for both parties: ICE-WATCH cannot be registered in respect of watches, only other goods in class 14 such as jewellery.
TKS s.a. has appealed the Court’s decision to the Court of Appeal.
This case is similar to another where initial interest confusion was key: Levi Strauss v Kimbyr Investments. In that case, the High Court agreed that, while branding at the point of sale might prevent confusion amongst potential purchasers in-store, it was enough that a potential purchaser was likely to be confused when he or she saw a pair of jeans with a back pocket tab similar to those used on Levis jeans being worn in public.
The takeaway point from both these cases is to ensure that in any opposition proceedings you consider likely confusion and the type of confusion that may exist at every stage of the purchasing process, not just at the point of sale itself.