🇬🇧 - Ice Watch vs Swatch
Mis à jour : 8 juil. 2020
Consequently, the French Supreme Court imputes to ICE WATCH a risk of being confused with SWATCH.
On January 7, 2010 Ice SA submitted the international registration for the word and picture trademark ICE WATCH under No. 1029087 for various products in Class 14, including particularly "watches and time-measurement instruments", stating France in particular; the trademark consists of the word ICE underlined, under which in small lettering comes the word "watch."
The SWATCH company, pursuant to its international trademark, protected in France, of "Swatch", No. 506 123, which has been entered since 2006, filed opposition proceedings with the INPI against entry of the above trademark with regard to the French part, since it was entered for the same products.
Its opposition claim was dismissed by the Director of the INPI, who approved application for entry of the trademark.
The Paris appeal court, the place of jurisdiction for legal remedies against decisions of the INPI, quashed this decision.
The court takes the view that the two trademarks in visual terms have the component "SWATCH" in common and are of similar length. The court emphasises that the two trademarks have "the sound [souatch] phonetically in common, which arises from the phonetic caesura generated by the word "Ice" (I-ce) and the linkage of sounds, whereby the differences are weakened as regards the length and structure of the two trademarks."
In a terminological sense the appeal court is not convinced that the reference public, i.e. the average French consumer, perceives the word WATCH as an English translation of the word "Uhr." And although the word ICE is the English translation of the word "EIS", this conceptual difference is (the court holds) not liable to weaken the prevailing phonetic similarities between the trademarks, not even the ancillary and verbally not perceivable graphic elements of "Ice Watch."
The appeal court deduces from this comparison that "the overall impression produced by the trademark ICE (...) is liable to effect a confusion in the perception of the consumer, who will be lead mistakenly (...) to associate the two trademarks and impute to them a common origin in the form of a modification of the earlier trademark."
On 6 October 2015 the court of appeal confirmed the decision of the judges in the principal proceedings, on the grounds that they could draw, from a comparison of the overall impression of the two trademarks, the conclusion that "the overall impression gained from the "Ice Watch" trademark is liable to effect a confusion in the perception of the consumer, since he will be mistakenly led, given the similarity, indeed the identity of the products concerned and the high profile of the earlier brand "Swatch", to confuse the two trademarks, or at least to associate them with each other, and to impute to them a common origin in the form of a modification of the earlier trademark."
The registration was therefore refused.
A coexistence agreement has at any rate been signed by and between the Parties, which concerns the Community Trademark of the same name.
The application for registration should, in all logic, be rejected. But, as informed us the company ICE SA, a confidential agreement between the parties had been signed in the meantime, authorizing the use of the mark under certain conditions, such that the opposition procedure has been closed by the INPI and the trademark has been definitively registered. By clicking here we invite you to read the note that the General Counsel of ICE SA, Madame Céline Eyers, has asked us to publish.