Swatch versus Apple: If you "Tick different" does that mean that you "THINK DIFFERENT"?

What happens when an application by SWATCH for the mark  is opposed by Apple on the basis of its  mark? In Singapore, the opposition was rejected. Kat friends Lau Kok Keng, Nicholas Lauw and Jiamin Leow collectively report on this recent decision.

Swatch filed two applications to register the mark  in Singapore in classes 9 and 14 respectively. Apple relied on its earlier mark  and opposed these applications, Apple argued that Swatch’s mark should be refused registration as being confusingly similar, under s 8(2)(b) of the Singapore Trade Marks Act (“TMA”), to . Apple further argued that Swatch’s  mark should be refused registration under s 8(4) of the TMA as it indicates a connection with Apple’s earlier well-known  mark and thereby damages Apple’s interest. Apple further argued passing off of its mark 8(7) of the TMA), and that the applications had been filed in bad faith (s 7(6) of the TMA). All of these grounds were dismissed.

The importance of this decision lies in the application by the Principle Assistant Registrar (“PAR”) of the first step of the “step-by-step” approach laid down by the Singapore Court of Appeal in the landmark decision of Staywell Hospitality Group v Starwood Hotels & Resorts Worldwide in determining whether a trade mark should be refused registration under s 8(2)(b) of the TMA. The “step-by-step” approach can be summarized as follows:

(1) The first step is to assess whether the respective marks are similar;
(2) The second step is to assess whether there is an identity or similarity between the respective goods or services; and
(3) The third step is to consider whether there exists a likelihood of confusion.

The First Step under s 8(2)(b) of the TMA

                                                        
Swatch’s Application Marks                         Apple’s Earlier Mark

Apple emphasized that both marks had the same syllabic structure and that there was a significant overlap in the characters of the words in both marks. Apple further argued that the replacement of “H” and “N” with “C” in Swatch’s application is insignificant and not easily perceivable. Swatch argued that the visual differences are clear and obvious, and that Apple’s marks are of low technical distinctiveness.

The PAR acknowledged that in assessing mark similarity, the factor of “distinctiveness” is to be integrated into the inquiry. However, as Apple did not argue that its mark ought to enjoy a “higher threshold” before a mark is found different from it, the PAR limited the inquiry to assessing only the inherent distinctiveness.

Based on the above, the PAR proceeded to consider whether the marks are visually, aurally and conceptually similar.

For the visual similarity inquiry, the PAR found the following:

- Apple’s mark enjoys only a normal level of distinctiveness. As such, the distinctiveness factor did not have much impact on the similarity enquiry.
- To an average consumer, Apple’s  mark does not have a distinctive or dominant component, but is instead distinctive as a whole. Similarly, Swatch’s  mark is also distinctive as a whole.
- The average consumer will immediately be able to perceive the differences between “Tick” and “THINK” and likely view the marks as different overall.

As for aural similarity, the PAR found that the aural differences in respect of the first syllable (“Tick” / “THINK”) will be more significant to the average consumer. She also found that the middle sound – “i" compared to “in” are clear and not likely to be slurred, which meant that the first syllable in both marks will sound different when pronounced normally.

Finally, as for conceptual similarity, Apple argued that its mark had a higher level of abstraction than Swatch’s mark, and that the grammatical error of pairing a verb with an adjective (instead of an adverb) was both intentional and significant. On the other hand, Swatch argued that the meaning of “Tick” is clearly different conceptually from “THINK” and was coined with reference to Swatch’s long history and close association with timepieces.

The PAR accepted Apple’s contention that the grammatical error is significant. However, she found that the average consumers will perceive it as not a grammatical error, but a quasi-noun, for e.g. “Think ‘big’” and “Think ‘beautiful’”. Once again, placing herself in the shoes of an average consumer, she found that the different conceptual meanings of “Tick” and “THINK” would suffice to distinguish the marks.

Overall, the PAR found that the respective marks are more dissimilar than similar, albeit in different degrees, visually, aurally and conceptually.

There are two further interesting points of note.

First, multiple references were made in the PAR’s decision to the fact that Apple’s mark was in all capital letters, whereas only the first letter in Swatch’s mark was in capital letters. However, this point should not have been considered in the first place.

As pointed out by the Singapore High Court in Allergan, Inc and anor v Ferlandz Nutra Pte Ltd, the registration of a mark “in block capital letters covers the use of the word in every font or style possible” (at [44]). This is consistent with pronouncement in previous decisions. As such, the fact that the mark was registered in block capital letters should have been wholly ignored during the visual similarity inquiry.

Second, the PAR placed large emphasis on what the average consumer’s views may be when considering similarity of the marks. Whilst this does make the inquiry considerably subjective, the PAR explained that the assessment should not be “as simplistic as the quantitative approach makes it appear [and] realism should be incorporated”.

However, this pragmatic approach has to be balanced carefully against the need for consistency of decisions. It is at uphill task for any person to step into the shoes of an average consumer, who has multiple characteristics determined by various case law.

Indeed, in certain circumstances, incorporating an element of realism in trade mark disputes, instead of the “quantitative approach”, may even be dangerous. If such an element of realism is incorporated regardless of the extent of evidence adduced therein, there may potentially be situations where findings resulting from “realism” may not sit well with other evidence adduced (such as survey evidence of confusion). Which finding should then be given priority?

Well-Known Mark under s 8(4) of the TMA

This decision is a timely reminder for parties trying to assert that their marks are “well-known” about the evidence that must be adduced. The PAR commented that Apple’s evidence, whilst extensive on a global basis, “stops short of establishing a nexus to Singapore sufficient to support Apple’s claim that its  Mark is well known in Singapore”. Whilst Apple had relied on various screenshots from its www.apple.com homepage that used the mark and argued that this homepage was accessible in Singapore, such use “falls short of showing whether, how and to what extent it impacts the Singapore public such that the  Mark is well known”.

Photo on lower left is by Keith Evans and is licensed under a Creative Commons Attribution-ShareAlike 2.0 license.