August 27, 2015

Watch Out!

Are Apple and Swatch on a trademark collision course? Some think so, but some think different(ly). We will see in time.

Last month, Swatch filed applications in Switzerland to register the mark TICK DIFFERENT for use in connection with various goods in Classes 9 and 14 (including "computers and batteries and electronic equipment and batteries for watches and timepieces" as well as many kinds of timepieces and accessories). For consumers of Apple products, this may call to mind THINK DIFFERENT, a tag line Apple has used for over a decade. This tag line was the centerpiece of a transformational advertising campaign for Apple at the turn of the century (see below).


Though the THINK DIFFERENT tag line may not feature as prominently in promotional materials now, Apple continues to claim it and maintain registrations for it for use with a variety of goods in Class 9 (including computers and measuring instruments) in multiple jurisdictions, including Switzerland and the U.S.

Swatch's application to register TICK DIFFERENT seems like a direct jab at Apple in part because Swatch also recently filed applications to register ONE MORE THING and SWATCH ONE MORE THING in many jurisdictions. Dedicated Apple consumers who watch Apple's annual keynotes know the phrase ONE MORE THING historically signaled the moment of the presentation in which a new product or feature was revealed. Steve Jobs employed this tag line numerous times in the course of his career as CEO of Apple. However, his successor has notâ¦. until the introduction of the Apple Watch.

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Apple Watch Collections[/caption]

Does this new product threaten existing watch makers? Last year, Swatch warned Apple against any attempt to trademark IWATCH. Swatch owns registrations (including a US registration) for ISWATCH (& design). More recently, Swatch's CEO derided the Apple Watch as an "interesting toy." Swatch appears to be protecting its market against intrusion, and has introduced some distinctive products of its own, including some that beat out others on price. While Swatch denies any connection between its applications to register ONE MORE THING and Apple, it seems clear that two companies who might not have thought of themselves as competitors a decade or two ago are now going after the same consumers.

So are Swatch's new applications a pre-emptive strike against Apple's anticipated encroachment on Swatch's market territory? Or is this just a ticking time bomb, an inevitable trademark clash in light of the companies' present trajectories?

This would not be the first time Apple experienced something like this. A few decades ago, Apple, Inc. and Apple Corps. (owned by the Beatles) attempted to resolve a trademark dispute by agreeing Apple Inc. would stick to computers and Apple Corps. would stick to music. However, the ever-expanding digital world made it difficult, if not impossible, to discern the boundaries of those two industries and disputes periodically flared until finally in 2007 Apple, Inc. acquired all the APPLE trademark rights from Apple Corps. and agreed to license certain of them back.

Trademark rights do not exist in a vacuum. They are associated with particular goods and services. When determining whether a proposed mark is confusingly similar to an existing mark, one factor to consider is whether the owner of the existing mark is likely to expand into the goods and services associated with the junior mark. As illustrated above, whether or not expansion into a particular market segment is likely changes over time. While brand owners cannot prevent market changes, they can anticipate and plan for them. As you protect your existing trademark portfolio, consider whether changes in technology or the marketplace warrant new applications or whether it is possible (or advisable) to amend existing registrations.

As for how brand owners will be affected by changes in the timepiece and wearable computer industries, let's watch what happens.