A recent verdict by the National Civil and Commercial Federal Court No. 10 undertook a high-profile trademark dispute between Apple Inc. and Swatch AG. Both companies faced each other in Docket Nos. 580/16 and 7945/16 (“Apple Inc v. Swatch AG s/ cese de oposición al registro de marca” and “Swatch AG c/ Apple Inc s/ cese de oposición al registro de marca”) over the registration of the trademarks “IWATCH” and “ISWATCH”, related to products in classes 9 and 14 (technology and watchmaking). The lawsuit arose when each part filed oppositions against the registration of the other’s marks, alleging a likelihood of confusion with their prior signs.
Apple sought to register “IWATCH”, while Swatch questioned the sign due to its proximity to its well-known mark “SWATCH” and to the designation “ISWATCH”, which it had also used to identify watches. According to the Swiss company, the phonetic and conceptual similarity could mislead consumers. Apple, on the other hand, argued that its sign falls within its well-known family of marks with the “i” prefix (such as iPhone or iPad), and that the mark as a whole was sufficiently distinctive.
The judges ruled in favor of Apple Inc. They declared Swatch’s opposition to the “IWATCH” mark unfounded, considering that the roots “I” and “S” are sufficiently different and that consumers who purchase watches, especially high-end ones, tend to pay attention to the commercial origin of the product. However, the judges upheld Apple’s opposition against the mark “ISWATCH”. According to them, Swatch’s incorporation of the letter “i” was not accidental, but could be interpreted as an attempt to move closer to Apple’s well-known family of marks, which did create a likelihood of confusion.
The court analyzed the signs from the perspective of the average consumer. In this type of conflict, the comparison is not limited to an isolated detail, but rather examines the overall impression of the signs, their sound, structure, and commercial context.
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