The European General Court (EGC) dissmissed the appeal of the Swatch AG against the Community Trademark (CTM) application “SWATCHBALL“ by Panvision Europe Ltd (Judgment dated 19 May 2015; Case No.: T‑71/14).
Background of the Case and Subject Matter
On 24 December 2007, Panavision Europe Ltd filed an application for registration of a Community Trademark at the Office for Harmonization in the Internal Market (OHIM). The mark in respect of which registration was sought is the word mark “SWATCHBALL” for –among others – lighting and photographic equipment. The Community Trademark application was published in Community Trademarks Bulletin No 24/2008 of 16 June 2008.
On 15 September 2008, the applicant, Swatch AG, filed a notice of opposition which was based on the following earlier marks:
- The international word mark “SWATCH” (No: 469 696) and the Community trademark “Swatch” (No: 226 019) for - among others - “clocks and watches”.
- The international word/device mark (left below) (No: 614 932; 506 123, 226 316) for – among others – watches and jewellery.
Decisions of the previous instance
On 13 January 2012, the Opposition Division rejected the opposition in its entirety. On 9 March 2012, the applicant filed a notice of appeal with OHIM against the decision of the Opposition Division.
By decision of 11 November 2013, the Second Board of Appeal of OHIM (BoA) dismissed the applicant’s appeal. Firstly, the court was of the opinion that there is no likelihood of confusion as the goods and services at issue are dissimilar.
Secondly, the court came to the conclusion, that the earlier marks may have a reputation in the French, German and Spanish markets for watches and clocks, but, the goods and services at issue are so different, that the mark applied for is unlikely to bring the earlier marks to the mind of the relevant public.
Thirdly, the BoA found that the applicant had failed to prove that use of the mark applied for in relation to the goods and services covered by it could cause a dilution of the earlier marks through the dispersion of their identity and their hold upon the public mind or take unfair advantage of the reputation or distinctive character of the earlier trademarks.
Decision of the EGC
The EGC dismissed the appeal of the Swatch AG.
The Court ruled, that three cumulative conditions must be met in order to create likelihood of confusion if goods and services of opposing trademarks are not similar: First, the respective marks must be similar or identical; secondly, the earlier mark must have a reputation; thirdly, there must be a risk that the use, without due cause, of the later mark could take unfair advantage of or be detrimental to the distinctive character or the repute of the earlier mark.
In the present case, the EGC acknowledged that the first and the second conditions were fulfilled: “SWATCHBALL” includes the whole of the reputational word mark “SWATCH”.
However, with respect to the risks required by the third condition, those risks are based on the similarity of the trademarks and become real when the relevant public creates a link between the marks so that the later mark recalls the earlier one, without it being necessary for them to be confused. The EGC came to the result that such a link does not exist between “SWATCH“ and “SWATCHBALL“ because the goods and services protected by the respective marks were too different. The relevant public of “SWATCHBALL” is specialized in the field of lighting, optical, lighting and photographic equipment and other visual effects, whereas, the trademark “SWATCH” is addressed to the general public. Therefore, the opposing trademarks have different distribution channels and purposes and belong to separate market sectors, thus they are not in competition at all.