IN THE INTELLECTUAL PROPERTY OFFICE OF NEW ZEALAND
[2017] NZIPOTM 20
IN THE MATTER of the Trade Marks Act 2002
AND
IN THE MATTER of International trade mark registrations designating New Zealand no. 1026083 SWATCH ONE MORE THING and no. 1026084 ONE MORE THING in classes 9 and 14 in the name of SWATCH AG (SWATCH SA) (SWATCH LTD)
Applicant
AND
IN THE MATTER of oppositions by APPLE INC.
Opponent
Hearing on 6 June 2017
T Huthwaite for the applicant
B Sullivan for the opponent Page 2 of 49
Introduction
1. This decision is in respect of oppositions against two International Trade Mark Registrations designating New Zealand. The International Registrations are in the name of Swatch AG (Swatch SA) (Swatch Ltd).
2. International Trade Mark Registration no.s 1261460 SWATCH ONE MORE THING and 1261461 ONE MORE THING were registered by the World Intellectual Property Organization (WIPO) on 22 May 2015. The designations under those registrations, requesting an extension of protection to New Zealand, were submitted by WIPO to the New Zealand Intellectual Property Office (IPONZ) on 20 August 2015.
3. In accordance with IPONZ practice, the New Zealand designations were assigned their own unique numbers. A summary of the New Zealand designations is below:
New Zealand Opposed marks Filing date Classes designation no.
1026083 SWATCH ONE MORE THING 22 May 2015 9 and 14
1026084 ONE MORE THING 22 May 2015 9 and 14
4. Full details of Swatch’s New Zealand designations are set out in Schedule 1.
5. In conformity with New Zealand’s obligations as a contracting party under the Madrid Protocol, IPONZ examined the New Zealand designations in the same manner as it would a local trade mark application. IPONZ accepted the New Zealand designations and published them for opposition purposes in the IPONZ Journal on 25 September 2015.
6. The New Zealand Designations have been opposed by Apple Inc. Apple relies on what it describes as the “trade mark/slogan ONE MORE THING” for the purposes of its opposition.1
1 Amended notices of opposition dated 18 April 2017, paragraphs 2, 9, 12 and 15. TM No.s 1026083 & 1026084 Page 3 of 49
7. The Trade Marks Act 2002 (Act), the Trade Mark Regulations 2003 (Regulations) and the Trade Marks (International Registration) Regulations 2012 (International Regulations), apply to these proceedings.
Grounds of opposition
8. In both proceedings the grounds of opposition, and the corresponding provisions of the Act, are:
a. Likely to deceive or cause confusion – s 17(1)(a);
b. Contrary to law (passing off and Fair Trading Act 1986) – s 17(1)(b);
c. Bad faith – s 17(2); and
d. Confusion with well-known trade mark – s 25(1)(c).
9. The applicant denies all four grounds of opposition.
Evidence
10. Apple’s evidence in chief comprises statutory declarations from:
a. Thomas R. La Perle (Director in the Legal Department of Apple Inc.), dated 8 April 2016 (La Perle); and
b. Shona Elizabeth Russell (Legal Executive employed by Apple’s New Zealand Patent and Trade Mark Attorneys), dated 12 April 2016 (Russell 1);
11. Swatch’s evidence consists of an affidavit given by Jeannine Aebi (the Chief Financial Officer and Vice President of Swatch AG), dated 24 June 2016 (Aebi).
12. Apple’s reply evidence comprises statutory declarations from:
a. Shona Elizabeth Russell, dated 2 August 2016 (Russell 2); and
b. Shona Elizabeth Russell filed in a previous proceeding relating to Swatch’s trade mark application no. 994956 i POP, dated 14 October 2015 (Russell 3).
TM No.s 1026083 & 1026084 Page 4 of 49
Background
Apple Inc. and Steve Jobs
13. Apple was founded by Steve Jobs, Steve Wozniak and Ronald Wayne on 1 April 1976, and was incorporated in the United States of America on 3 January 1977.2 By February 2015, Apple had a market value of US $750 billion.3
14. Apple designs, manufactures, and markets mobile communication and media devices, personal computers, and portable digital music players, and sells a variety of related software, services, accessories, networking solutions, and third- party digital content and applications.4 Apple’s products and services include iPhone, iPad, Mac, iPod, Apple Watch, Apple TV, a portfolio of consumer and professional software applications, and the iOS, OS X, tvOS, and watch OS operating systems, iCloud, Apple Pay and a variety of accessory, service and support offerings.5 In addition, Apple sells and delivers digital content and applications through Apple Music, the iTunes Store, App Store, Mac App Store, Apple TV App Store, and iBooks Store.6
15. Mr La Perle states that Apple sells its products worldwide through its retail stores, online stores and direct sales force, as well as through third-party cellular network carriers, wholesalers, retailers and value-added resellers.7 Apple also sells a variety of third-party Apple compatible products, including application software, and various accessories through its online and retail stores.8
16. Apple’s customers include consumers, small and mid-sized businesses and education, enterprise and government customers.9 Mr La Perle says that over the course of more than 35 years of operation, Apple has earned a loyal customer base amongst consumers and commercial enterprises and Apple’s goods and
2 La Perle, paragraph 5. 3 Ibid. 4 La Perle, paragraph 6. 5 Ibid. 6 Ibid. 7 La Perle, paragraph 6. 8 Ibid. 9 La Perle, paragraph 6. TM No.s 1026083 & 1026084 Page 5 of 49
services have become some of the most recognised and highly sought after in the world.10
17. According to Mr La Perle, in January 2005, the leading international branding authority, Interbrand, published an article entitled “Readers Pick Apple: 2004 Readers’ Choice Awards”, where Apple was held to be the brand with the most global impact.11 In the years 2012 through to 2015 Interbrand also appears to have ranked the Apple brand as second and first “Best Global Brands”.12 Mr La Perle also refers to the success of Apple’s iPod, iPhone and iPad devices, which he says have “taken the Apple brand to new heights of fame and recognition within a market beyond that of computer users and developers”.13 In 2009, “iPhone”, “Apple”, and “iPod” were voted among the top 4 “CoolBrands” in the United Kingdom.14
18. Mr La Perle’s evidence is that Apple has been indelibly associated with Steve Jobs since its inception.15 He states that Mr Jobs steered the company through its early years, including the heralded launch of the Mac computer in 1984.16 Mr Jobs left Apple in 1985 and returned to the company in late 1996 as its Interim Chief Executive Officer.17 As Apple’s CEO from 1997 through 2011,18 Steve Jobs was intimately involved with the creation, design and public launches of most new Apple products, including the iMac, iPod, iPhone and iPad devices.19 Mr La Perle says that it was at these keynote events that Mr Jobs first introduced his so-called “Stevenotes”, one of which is the tagline “ONE MORE THING”.20
10 La Perle, paragraph 7. 11 La Perle, paragraph 15 and exhibit TLP-4. “CoolBrands” rankings also show that in the United Kingdom “Apple” was number one in the Top 20 CoolBrands for 2012/2013, 2014/2015, and 2015/2016: La Perle, paragraph 16 and exhibit TLP-6. 12 La Perle, paragraph 16 and TLP-5. 13 La Perle, paragraph 16. 14 La Perle, paragraph 16 and TLP-6. 15 La Perle, paragraph 8. 16 Ibid. 17 La Perle, paragraph 10. 18 Mr Jobs’ formal title was “Interim Chief Executive Officer” until the interim part of his title was removed in 2000: La Perle, footnote 1. 19 La Perle, paragraph 12. 20 Ibid. TM No.s 1026083 & 1026084 Page 6 of 49
The Swatch Companies
19. The Swatch Group is a multinational company primarily active in the manufacture and sale of watches, watch movements and components, and jewellery.21 Ms Aebi states that the Swatch Group is the world’s largest watchmaking group, and supplies nearly all the components required for the watches sold by its 18 individual brands.22 Swatch AG (Swatch SA) (Swatch Ltd) (together Swatch) is a wholly-owned subsidiary of the Swatch Group, and is responsible for the design, distribution and services of wristwatches sold under the SWATCH brand.23
20. Swatch’s first collection of SWATCH models was introduced on 1 March 1983 in Zurich, Switzerland.24 The SWATCH watch was originally conceived as a standard timekeeper in plastic.25 Ms Aebi says that, as at around June 2016,26 Swatch sold more than a dozen different types of watches, including metal-bodied watches (the Irony series) and digital watches with a touch screen (the Touch series).27
21. SWATCH watches are marketed and sold in over 40 countries around the world.28 Ms Aebi states that Swatch products have been available in New Zealand since at least 1983.29 During 2015, Swatch products were available in physical retail stores in Auckland, Wellington and Christchurch.30 In addition, Swatch products can be purchased online for delivery within New Zealand, although it is unclear whether this was the case at the relevant date.31
22. Swatch’s confidential annual sales figures for New Zealand between 2006 and 2015 are substantial.32 Ms Aebi says that Swatch promotes its products in New Zealand primarily by way of in-store, online, and print advertising.33 Ms Aebi’s declaration annexes examples of print advertisements that have appeared in
21 Aebi, paragraph 4. 22 Aebi, paragraph 4. The brands falling within the Swatch Group include, Breguet, Harry Winston, Blancpain, Glashutte Original, Jaquet Droz, Leon Hatot, Omega, Longines, Rado, Unon Glashutte, Tissot, Balmain, Certina, Mido, Hamilton, Calvin Klein watches + jewelry, Swatch and Flik Flak: Aebi, paragraph 5. 23 Aebi, paragraph 7. 24 Aebi, paragraph 14. 25 Aebi, paragraph 11. 26 Being the date of Ms Aebi’s affidavit. 27 Aebi, paragraph 16 and exhibit JA-03. 28 Aebi, paragraph 17. 29 Aebi, paragraph 19. 30 Aebi, paragraph 20 and exhibit JA-06. 31 Aebi, paragraph 21 and JA-07. Exhibit JA-07 is dated 9 May 2016. 32 Aebi, paragraph 24. 33 Aebi, paragraph 27. TM No.s 1026083 & 1026084 Page 7 of 49
magazines circulating in New Zealand prior to the relevant date.34 According to Ms Aebi, Swatch also has a strong online presence, and for many years has been active on Facebook, Twitter, YouTube, Pintrest, GooglePlus, and Instagram.35
The phrase “one more thing”
23. Ms Aebi’s evidence is that the phrase “one more thing” originates from the TV show “Columbo”, where the protagonist, Inspector Columbo, usually ends his interviews of suspects with the catchphrase “just one more thing”.36 Swatch asserts that the opposed mark ONE MORE THING was inspired by Inspector Columbo’s citation ‘Just one more thing’.37
24. Mr La Perle’s evidence refers to Mr Jobs’ use of the phrase “One more thing” in his “Stevenotes”.38 “Stevenotes” is a colloquial term for keynote speeches given by Mr Jobs at Apple events such as the Worldwide Developers Conference, Macworld, and Apple Expos.39 These Stevenotes typically began with Steve Jobs presenting sales figures for Apple products, reviewing products released recently, and presenting one or more new products.40 Mr Jobs would then typically feign some concluding remarks, turn as if to leave the stage and then turn back, saying ‘But there’s one more thing’.41 Mr La Perle appears to acknowledge that Mr Jobs’ use of this catchphrase was reminiscent of actor Peter Falk’s “Columbo” character in the television series.42 At the hearing, Apple’s counsel observed that the origin of the saying “one more thing” is, however, unknown.
25. I accept “one more thing” is the catchphrase used by Inspector Columbo repetitively in the Columbo television series, which began in the late 1960s.43 However, I consider the saying must have been in use well before then given it is an ordinary phrase used in everyday language, which consists of a standard combination of common English words.
34 Aebi, paragraph 27 and exhibit JA-12. 35 Aebi, paragraph 29 and examples in exhibit JA-13. 36 Aebi, paragraph 32 and exhibit JA-15. 37 Aebi, paragraph 32 and exhibit JA-15. 38 La Perle, paragraph 19. 39 La Perle, paragraph 17. 40 La Perle, paragraph 19. 41 La Perle, paragraph 19 and exhibit TLP-7, and Aebi, exhibit JA-21. 42 La Perle, paragraph 19. 43 Aebi, exhibit JA-15. TM No.s 1026083 & 1026084 Page 8 of 49
Relevant date
26. Where the opposed application is an international registration designating New Zealand, and the request for extension of protection to New Zealand is mentioned in the international application, the priority date is the date of the international registration, being 22 May 2015 (relevant date).44
Section 17(1)(a) ground – likely to deceive or confuse?
27. Section 17(1)(a) of the Act provides that the “Commissioner must not register as a trade mark or part of a trade mark any matter… the use of which would be likely to deceive or cause confusion”. The purpose of this section is not to protect competitors, but rather to protect the public interest by refusing to accord monopoly rights to a mark, the use of which is likely to deceive or confuse those in the market for the relevant goods.45
28. The usual test to determine whether or not a mark is likely to deceive or confuse under s 17(1)(a) of the Act is that set out in Smith Hayden & Co Ltd’s Application,46 as applied by the New Zealand Court of Appeal in Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd47 and Sexwax Incorporated v Zoggs International Limited:48
Having regard to the reputation acquired by ... [the ONE MORE THING slogan/mark used by Apple], is the Court satisfied that the mark[s] applied for, [SWATCH ONE MORE THING and ONE MORE THING] if used in a normal and fair manner ... will not be reasonably likely to cause deception and confusion amongst a substantial number of persons.
29. The applicant has the onus of establishing, on the balance of probabilities, that the opposed mark does not offend against s 17(1)(a) of the Act.49 First, however,
44 Regulation 12(3)(a) of International Regulations. The parties agree that the relevant date is 22 May 2015: confirmed by counsel for Apple at the hearing (see also written submissions, paragraph 16), and Swatch’s written submissions, paragraph 24 citing Pioneer Hi-Bred Corn Co v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 at 61. See also Novartis AG v Abbott Biologicals BV [2014] NZIPOTM 42 at [39]. 45 Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 at 63; NV Sumatra Tobacco Trading Co v British American Tobacco (Brands) Incorporated [2010] NZCA 24, (2010) 86 IPR 206 (CA). 46 Smith Hayden & Co Ltd’s Application (1945) 63 RPC 97 at 101, which concerned the equivalent UK provisions. 47 [1978] 2 NZLR 50 at 63. 48 Sexwax Incorporated v Zoggs International Limited [2014] NZCA 311 at [27]. 49 Pioneer Hi-Bred, supra at 61. TM No.s 1026083 & 1026084 Page 9 of 49
the opponent has the onus of establishing awareness of its mark as at the relevant date of 22 May 2015.50
Awareness of the opponent’s marks
30. The opponent needs to establish that the awareness of its mark, or name, at the relevant date was sufficiently substantial to lead to the possibility that the opposed goods would be identified with the opponent.51 However, the threshold is a relatively low one.52 The opponent only needs to show awareness, cognisance or knowledge of the mark.53
31. Section 17(1)(a) does not itself refer to the requirement that the opponent establish the requisite reputation.54 However, comprehensive case law has developed establishing the awareness requirement. In Pioneer Hi-Bred Richardson J postulated that the reason such attention is paid in the cases to the reputation of an opponent in the local market is that if the opponent’s mark is wholly unknown in the New Zealand market in which the applicant’s mark is proposed to be used, the use of the applicant’s mark could not lead to deception or confusion.55
32. For this ground of opposition Apple relies on its use of, what it describes as, the trade mark/slogan “One more thing”. Apple claims it has used “One more thing” extensively throughout the world since at least 1998 in relation to computers,
50 Pioneer Hi-Bred, supra at 63. 51 Pioneer Hi-Bred, supra at 62 and The Council of Ivy Group Presidents (t/as The Ivy League) v Pacific Dunlop (Asia) Ltd (2000) 66 IPR 202 at [34]. What is a substantial number of persons depends on the nature and size of the market and is relative both to the number of persons involved in, and their impact on, that market: N V Sumatra Tobacco Trading Company v British American Tobacco (Brands) Incorporated, supra at [77] citing Pioneer Hi-Bred at 74 -75. 52 N V Sumatra Tobacco Trading Company v British American Tobacco (Brands) Incorporated, supra at [77]. 53 Ibid. The opponent need not establish that there was an awareness of its marks in respect of the opposed goods themselves: The Council of Ivy Group Presidents (t/as The Ivy League) v Pacific Dunlop (Asia) Ltd (2000) 66 IPR 202 at 212. 54 Richardson J observed in Pioneer Hi-Bred, that s 16 of the Trade Marks Act 1953 (the equivalent to s 17(1)(a) in the current Act) does not refer to the reputation of the opponent or of any competitor of the applicant in the New Zealand trade: “It does not say in so many words that, before the possibility of deception or confusion can be considered, the reputation of the opponent’s mark in New Zealand must be established”: supra at 62 – 63. 55 Pioneer Hi-Bred, supra at 63. TM No.s 1026083 & 1026084 Page 10 of 49
mobile digital devices, accessories, and related goods and services, and that since 2014 it has also used the slogan in relation to watches.56
33. Apple accepts that in order to succeed under s 17(1)(a) it must first establish that there was an awareness of its trade mark or name in New Zealand at the relevant date.57 Apple submits that its use of the “One more thing” slogan has been, and continues to be, trade mark use.58 As a result, Apple states that the use of “One more thing” in relation to Apple’s goods and services has come to be closely and uniquely associated with Apple.59 “Apple’s goods and services” are defined in
Apple’s submissions as:60
the goods and services Apple designs, manufactures and markets – mobile communication and media devices, personal computers, portable digital music players, smart watches and related software, services, accessories, networking solutions, and applications.
34. Apple submits that “One more thing” has acquired a secondary meaning when used in relation to Apple’s goods and services, and that the association of “One more thing” with Apple would have been widely known to those in the markets for Apple’s goods and services.61
35. Swatch disputes such an association, and states that there is no evidence that New Zealand consumers associate the phrase “one more thing” with Apple.62 Swatch submits that Apple has no reputation in the phrase “one more thing” in New Zealand, and that Apple has not used the phrase as a trade mark either in New Zealand or anywhere else in the world.63 According to Swatch, Apple appears to claim a ubiquitous reputation in the phrase “one more thing” for any goods or services in which it trades or may choose to trade in the future, but its evidence does not relate to any particular goods or services.64
56 Amended notices of opposition, paragraphs 2 and 3. The amended notices of opposition refer to “1988” but this was corrected at the hearing to 1998. See also La Perle, paragraph 20 and exhibit TLP-7, and Apple’s written submissions, paragraph [31](i), which are consistent with the correct year being 1998. 57 Written submissions, paragraph 20. 58 Written submissions, paragraph 32. 59 Written submissions, paragraph 33. 60 Written submissions, paragraph 6(ii). 61 Written submissions, paragraph 33. 62 Written submissions, paragraph 4.2. 63 Written submissions, paragraphs 4.2, 4.1 and 65. 64 Written submissions, paragraph 26.7. TM No.s 1026083 & 1026084 Page 11 of 49
36. Apple submits that, not only is its use of the “One more thing” slogan trade mark use, but that in order to succeed under s 17(1)(a) Apple’s use of the slogan does not need to be trade mark use. Apple relies on the High Court decision in The Council of Ivy League Group Presidents v Pacific Dunlop (Asia) Ltd65 as authority for the proposition that awareness need not be of a registered or even unregistered trade mark; it may be awareness of a name, or other indicator or sign.66
37. In The Council of Ivy League case John Hansen J provides a detailed discussion of the awareness requirement for a successful claim under s 16 of the Trade Marks Act 1953 (the relevant part of that section being the equivalent to s 17(1)(a) of the current Act).67 In particular, His Honour relies on the High Court of Australia decision, Radio Corporation Pty Ltd v Disney (1937) 57 CLR 448, involving an application by Radio Corporation to register as trade marks “Mickey Mouse” and “Minnie Mouse” in respect of radio receiving sets. Disney had not obtained registration in Australia for these names or the figures.
38. In the Radio Corporation case Rich J states:68
It cannot be denied that the opponents have obtained great reputation or notoriety for the form and name of Mickey and Minnie Mouse .... But it is said that that reputation is unconnected with the sale or handling of goods and is analogous rather to the fame of some personage of fiction or history. In matters such as this we are dealing with the vague and indefinite impressions of the great mass of the public who neither are required nor desire to refine upon distinctions of this sort. To them it is shown that the ... picture of Mickey Mouse reminds them of ‘Walt Disney’. ... [S]omehow or other, how, it is fruitless to inquire, they connect the appearance on an article of the name or form of ‘Mickey Mouse’ with ‘Walt Disney’.
39. Latham CJ further states (emphasis added):69
The opponents have, in my opinion, shown that the names and the figures are so closely associated in the public mind, in Australia and elsewhere, with Walter E. Disney and his activities, that the use of either the names or the figures in connection with any goods at once suggests that the goods are ‘in some way or other connected’
65 (2000) 66 IPR 202 at [34]. 66 There is no reference in The Council of Ivy League Presidents case, however, to “indicators” or “signs”. 67 His Honour refers to United Kingdom and Australian commentary and cases on the equivalent provisions in those jurisdictions. 68 Radio Corporation, supra at 454-455. 69 Radio Corporation, supra at 453. TM No.s 1026083 & 1026084 Page 12 of 49
with Walter E. Disney (See, per Lord Macnaghten, Eno v Dunn (1890) 15 App Cas, at p263). This, the evidence shows, would be the case whatever the nature of the goods to which the names were attached. It is very seldom indeed that there can be a world- wide association of ideas in connection with a particular name or figure, but the evidence shows that this association does exist in the present case.
40. Hansen J found that s 16 of the 1953 Act extends to both unregistered trade marks and even names.70 His Honour was also satisfied that the awareness relied on by the opponent may be in respect of goods or services of a quite different description from those covered by the application.71 Further, Hansen J considered the Radio Corporation case shows that the prior awareness can be a pervasive fame or awareness across a range of goods or services.72 His Honour concluded that there was an awareness of the name “Ivy League” in New Zealand, and that all the evidence showed that the term “Ivy League” points to the opponent and its constituent universities.
41. I consider there are, however, important distinguishing features between the present case and the decisions in Radio Corporation and The Council of Ivy League Presidents. Firstly, I consider the names Mickey and Minnie Mouse, and “Ivy League”, have a far greater reputation than the slogan “One more thing”. The evidence in The Council of Ivy League Presidents case amply illustrated a sufficient awareness of the name “Ivy League” in New Zealand.73 Hansen J considered that any well-educated New Zealander would be aware of the term, and he observed that the evidence shows that the term “Ivy League” points to the opponent and its constituent universities.74 “Mickey Mouse” and “Minnie Mouse” are described in the Radio Corporation case as having a “great reputation or notoriety”, and Latham CJ acknowledges that such a “world-wide association” is very rare. As will be seen from the review of the evidence below, the awareness of the slogan “One more thing” is far from at that level in New Zealand.
42. Secondly, the Radio Corporation and The Council of Ivy League cases did not involve a slogan but rather relied on the “fame of some person of fiction or history” or the awareness of an association of universities. In contrast, Swatch is not applying to register the name Steve Jobs or the name Apple. Instead of relying
70 The Council of Ivy League Presidents, supra at [34]. 71 The Council of Ivy League Presidents, supra at [39]. 72 Ibid. 73 The Council of Ivy League Presidents, supra at [50] and [42]. 74 The Council of Ivy League Presidents, supra at [42]. TM No.s 1026083 & 1026084 Page 13 of 49
on a famous individual such as Mr Jobs, or a famous company, such as Apple, the opponent relies on the “One more thing” catchphrase used by Mr Jobs.
43. In Sexwax Incorporated v Zoggs International Limited the Court of Appeal shed light on how s 17(1)(a) of the Act should be approached (emphasis added):75
When applying this section, the Commissioner begins by inquiring whether the opponent’s mark has a reputation in New Zealand at the relevant date. Such reputation need not be widespread; it all depends on the nature of the marks and the goods to which it is applied. Where marks are used in respect of goods with only a very narrow or specialised use or purpose, the mark may be known only to a small number of people. Pioneer Hi-Bred is a good example: the opponent to registration sold hatching eggs and breeding poultry, goods purchased only by those in the poultry breeding industry. It was only those in that industry who were aware of its existence, and therefore only among persons in that class that a reputation needed to be established. In other cases, a mark may be applied to goods sold very broadly or applied to numerous different goods under a brand’s penumbra. This is the initial inquiry into the “circumstances of trade”, against the background of which the marks are regarded as notionally in use.
44. The Court of Appeal further held that when applying s 17(1)(a) (emphasis added):76
The correct focus is on the awareness of the opponent’s mark in relation to prospective purchasers of the goods to which its mark attaches and individuals and entities involved in that trade; not the entirety of the purchasing public in New Zealand. The question of likelihood of deception or confusion must then be assessed against that reputation, considering the fair, notional use of the goods bearing each of the marks.
45. Adopting the terminology in Sexwax, the question to ask is whether, having regard to the reputation attaching to Apple’s slogan/mark, and in light of the potential products bearing Swatch’s marks being advertised and sold in the classes for which it applied, there is a sufficient number of individuals aware of Apple’s slogan, and exposed to Swatch’s marks, to engage s 17(1)(a).77 The goods to which Apple’s “One more thing” slogan has been applied, if any, are also part of the initial inquiry into the
75 Sexwax Incorporated, supra at [48] et seq (footnotes excluded). 76 Sexwax Incorporated, supra at [65]. 77 Adopting the Court of Appeal’s terminology in Sexwax Incorporated, supra at [77]. TM No.s 1026083 & 1026084 Page 14 of 49
“circumstances of the trade”, against the background of which the marks are regarded as notionally in use.78
46. It is well established that, for the purposes of s 17(1)(a), a mark may acquire a reputation in New Zealand through use of that mark in other countries.79 Actual trade or dealing in goods bearing the trade mark in New Zealand is not necessary.80 The manner in which, or the source from which, the awareness or knowledge has been acquired is immaterial.81 However, it is not an easy task for an opponent to show sufficient spillover reputation from overseas use to satisfy the “awareness” test.82 Relevant evidence will include advertisements within the forum and official figures as to the movement of people between New Zealand and the relevant overseas markets and how those persons are likely to have been exposed to the relevant mark.83
47. The key evidence of awareness of the Apple slogan “One more thing”, prior to the relevant date of 22 May 2015, is as follows:
a. A number of New Zealand news websites briefly refer to the slogan “One more thing” in connection with Steve Jobs and Apple, including:84
i. stuff.co.nz where four articles were published prior to the relevant date. The earliest is entitled “Steve Jobs Quits as Apple CEO”, and was published on 25 August 2011. It states “On stage at trade shows and company events ... he’d entrance audiences with new devices, new colors, new software features, building up to a grand finale he’d predictably preface by saying, “One more thing”.85 The second article, headed “Steve Jobs: The genius behind Apple” was
78 Sexwax Incorporated, supra at [48] citing Pioneer, supra at 63 per Richardson J, in turn citing Gaines Animal Foods Ltd’s Application (1951) 68 RPC 178 (HC) at 180, and Sexwax Incorporated, supra at [70]. 79 Spillover reputation has been recognised in New Zealand by the Court of Appeal in Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50 at 57-58, the High Court in, for example, Valley Girl Co Limited v Hanama Collection Pty Limited and Valleygirl Fashions Pty Limited (CIV 2004-485-2005, High Court, Wellington, Miller J), and the Commissioner, for example, Stefanel Next Pty Ltd v Next Retail Limited [2006] NZIPOTM 15. See also McCormick and Co Inc, supra and Conagra Inc v McCain Foods (Aust) Pty Ltd [1992] 23 IPR at 234. 80 Valley Girl, supra at [19] citing Council of Ivy League Presidents, supra. 81 Pioneer Hi-Bred, supra at 57 citing Seven-Up Co v OT Ltd (1947) 75 CLR 203, 211. 82 Tibotec Pharmaceuticals Ltd v Siderca Sociedad Anonima Industrial Y Comercial [2009] NZIPOTM 1 at 31, citing Conagra, supra. 83 Conagra, supra at p234 as cited in Tibotec, supra at 31. 84 The most recent of the New Zealand online articles was published approximately 8 months before the relevant date and many of the articles were published around the same time,84 and therefore there is less exposure to New Zealand readers over a period of time. 85 Russell 1, paragraph 3(viii), and exhibit SER-2. TM No.s 1026083 & 1026084 Page 15 of 49
published on 5 October 2011 and includes a statement that “When he [Steve Jobs] spoke at Apple presentations ... legions of Apple acolytes listened to every word. He often boasted about Apple’s successes, then coyly added a coda – “One more thing” before introducing its latest ambitious idea”.86 The third article, entitled “It’s showtime for Apple as big day looms”, is dated 8 September 2014 and reads “One More Thing? Apple’s Jobs was famous for surprising fans with unexpected products at the end of his presentations”.87 A final Stuff article, headed “Just sit back and Apple Watch”, was published on 11 September 2014, and states “The stage and displays were simple and the dialogue familiar, “and now for one more thing” (an old favourite of Steve Jobs)”.88
ii. nzherald.co.nz where an article appeared on 10 September 2014 entitled “Apple Watch straps computing to the wrist”. The article includes a statement that “Cook [Apple’s chief executive at the time] introduced Apple Watch with the “one more thing” introduction that was a trademark of iconic Apple co-founder Steve Jobs”.89
iii. nbr.co.nz, which published an article on 10 September 2014 headed “Apple unveils big screen iPhone 6, supersize iPhone 6 Plus, Watch”. The article includes a statement that “After aping Steve Jobs “And one more thing line”, Apple CEO Tim Cook also used today’s event to preview the Apple Watch”.90
iv. nz.finance.yahoo.com/news, where an article appeared on 10 September 2014 entitled “New iPhones: Are they worth the wait (in line)?”. It states “There’s the pre-announcement hype, the rumours, and predictions that launch a million comments, the Keynote
86 Russell 1, paragraphs 2 and 3(vii), and exhibits SER-1 and SER-2. 87 Russell 1, paragraphs 2 and 3(vi), and exhibits SER-1 and SER-2. 88 Russell 1, paragraph 3(i), and exhibit SER-2. 89 Russell 1, paragraph 3(iii), and exhibit SER-2. 90 Russell 1, paragraph 3(ii), and exhibit SER-2. TM No.s 1026083 & 1026084 Page 16 of 49
address, and that famous line, ‘and one more thing’, which has led to so many of Apple’s greatest moments”.91
v. computerworld.co.nz, which published an article headed “5 things the Apple Watch can and can’t do”, on 10 September 2014, which reads “Apple’s latest “one more thing” was a doozy: A high-tech watch that CEO Tim Cook hopes will “redefine what people expect” from a wearable device”.92
b. Steve Jobs used the slogan “One more thing” on 33 occasions,93 and Tim Cook appears to have used it on at least one occasion,94 in Apple presentations that occurred in the 16 years leading up to the relevant date.95 Therefore, the slogan appears to have been used only about twice a year on average. The “One more thing” slogan was sometimes used in relation to product launches or new iterations of old products, for example, various versions of the iPod device, the Apple Watch, and the MacBook Pro.96 However, the slogan was also frequently used for other purposes, such as announcing company information (for example, Apple’s return to profitability in 1998, Mr Jobs’ permanent appointment as Apple’s CEO in 2000, and sales information in 2006), introducing performers (for instance, John Mayer’s live performance in 2006), and announcing features (for example, iMac in colours at Macworld in 1999 and FaceTime calling for the iPhone4 at WWDC in 2010).97 On the evidence before me, none of the Apple presentations referred to above were held in New Zealand. While a number of New Zealand residents may well have attended these Apple presentations, the only evidence before me of an individual from New Zealand attending is the Stuff article of 11 September 2014 regarding the Apple Watch launch, which states that the journalist attended the event as a guest of Apple and that
91 Russell 1, paragraph 3(v), and exhibit SER-2. 92 Russell 1, paragraph 3(iv), and exhibit SER-2. 93 La Perle, paragraph 23 and written submissions, paragraph 9. 94 Namely on 10 September NZT in relation to the launch of the Apple Watch: La Perle, paragraphs 20 and 30, and Russell, exhibit SER-4. La Perle also refers to Tim Cook using the “one more thing” slogan in relation to Apple Music at WWDC 2015, but it is unclear whether that event took place before the relevant date: La Perle, paragraph 20. 95 The catchphrase “One more thing ...” also appears to have been displayed prominently on screen at the Apple presentations, see for example La Perle, paragraphs 22, 24, and 30. 96 La Perle, paragraph 20. 97 La Perle, paragraphs 20 and 22 - 23. TM No.s 1026083 & 1026084 Page 17 of 49
journalists’ flights and accommodation for the event are organised and paid for by Apple.98
c. Photographs and video footage of the use of the “One more thing” slogan by Steve Jobs and Tim Cook were, however, able to be viewed in New Zealand on the YouTube channel via “fan videos”. At least one of Apple’s presentations also seems to have been live streamed to New Zealand, although, on the evidence before me, a link to that live stream (available at the NBR website nbr.co.nz) states that the “video live stream requires Apple’s Safari browser running in iOS or later .... Note: the live stream has crashed and frozen at times”, and it is not clear if the NBR article is part of NBR’s paid content.99 Counsel for Apple submitted it is highly likely that these presentations would be watched by anyone in New Zealand with an interest in technology and consumer electronics, Apple fans, users, and Apple retailers. However, there is no evidence before me to indicate how many New Zealand residents viewed the Apple presentations or the YouTube videos online.
d. At least four overseas websites contain commentary, tributes, videos and articles relating to Steve Jobs’ use of the “One more thing” slogan.100 However, again, there is no evidence before me as to how often these videos were viewed from New Zealand. These also appear to focus on the connection between the slogan and Mr Jobs rather than the slogan operating as a badge of origin for Apple’s goods.
e. An unofficial biography about Mr Jobs, titled “The Life & Death of Steve Jobs “One More Thing ...” was published on 8 August 2012.101 However, there is no evidence as to New Zealand sales or readership for this book. Again, the focus of this book appears to be Mr Jobs rather than Apple products.
48. The only clear evidence of people in New Zealand being exposed to Apple’s “One more thing” slogan are the online New Zealand news articles referred to at
98 Russell 1, exhibit SER-2. 99 Russell 1, exhibit SER-2. 100 The websites include EverySteveJobsVideo.com, Macworld.com, Fusion.net, and Forbes.com: La Perle, paragraphs 25 – 27, and 29. 101 La Perle, paragraph 28. TM No.s 1026083 & 1026084 Page 18 of 49
paragraph 47(a) above, and the reference in one of those articles to a “Stuff” journalist attending the Silicon Valley Apple presentation relating to, amongst other things, the Apple Watch.
49. Each New Zealand online article only refers to the “One more thing” phrase once, and that slogan is often buried part way through the article. “One more thing” does not appear in any of the headlines for these articles, which instead almost always refer to the Apple trade mark. There is no evidence as to how many New Zealand viewers read the online news articles, although it is clear the Stuff and NZ Herald websites are very popular.102 Having said that, many readers of those websites may well not have accessed the relevant articles and even those who did may not have read far enough through the article to see the references to “One more thing”. It is likely that some of the readers accessing the New Zealand online articles would also have been doing so from overseas.
50. Apple’s use of this phrase was not the focus of any of the articles published on New Zealand websites. The online references to the “One more thing” slogan appear to focus primarily on Steve Jobs, and to a lesser extent, Tim Cook.103 I consider the commentary in the online New Zealand articles is more indicative of the fame of Steve Jobs and the reputation of Apple rather than evidence of awareness of the slogan “One more thing”.
51. The slogan is clearly associated with Steve Jobs, and I accept that Steve Jobs is associated with Apple. However, for consumers to make the leap from awareness of the slogan “One more thing” to perceiving Apple as the origin of certain products requires an extrapolation that I am not convinced average New Zealand consumers would make, given the evidence before me.
52. Counsel for Apple submitted, at the hearing, that the above awareness evidence should be combined with the evidence of Apple’s reputation, which is referred to in the background section above. However, the amended notices of opposition do not rely on the APPLE mark, and I consider the evidence of Apple’s reputation
102 Russell 1, paragraph 6 shows that as at August 2014 there were 1.48 million readers of the stuff.co.nz website and 1.35 million readers of the nzherald.co.nz website: see also Russell 1, exhibit SER-5. 103 The only New Zealand article that does not refer to Steve Jobs is a non-news, specialist technology article on the “Computerworld” website, which I consider is likely to have a smaller technical readership compared with the general news media websites. TM No.s 1026083 & 1026084 Page 19 of 49
does not sufficiently compensate for the deficiencies in the reputation evidence for the slogan “One more thing”.
53. While the slogan appears in four articles relating to the launch of the Apple watch, it is effectively used as a presentation device ancillary to the product while “Apple watch” is the focus and the brand that acts as the badge of origin. In my view, the use of the “One more thing” catchphrase by Apple is in fact a performance technique. This is consistent with how it is described in some of the articles, for example, as the “preface” to the “grand finale”, “familiar dialogue”, and as an “introduction”.104
54. Swatch submits that the extent to which Apple has used the phrase “One more thing” is seldom and sporadic, and that it is merely a phrase or rhetoric that is quite usual during presentations.105 I tend to agree.
55. Swatch also submits that none of Apple’s evidence shows use of the phrase “one more thing” as a trade mark, because the phrase is not used to distinguish the trade origin of Apple’s goods or services and it does not relate to any particular goods or services.106 I accept that the slogan “one more thing” has not been used by Apple as a trade mark,107 but that is not necessary for the purposes of establishing the reputation required by s 17(1)(a). Having said that, the extent and type of reputation is relevant to the assessment of likely deception or confusion, and forms part of the circumstances of trade against the background of which the marks are regarded as notionally in use.108
56. Applying the Court of Appeal’s statements in the Sexwax case, the reputation need not be widespread, rather it depends on the nature of the “One more thing” slogan and the goods to which it is applied.109 The nature of “One more thing” as a catchphrase used by Mr Jobs in presentations is therefore relevant to the
104 Russell 1, exhibit SER-2. 105 Written submissions, paragraph 34. 106 Written submissions, paragraphs 26.2, 34.3, and 34.5. 107 In reaching this conclusion I have considered the definitions of “trade mark” and “sign” in s 5(1) of the Act, along with the meaning of use of a sign under s 6(a) of the Act. I have also taken into account that a slogan is registrable as a trade mark under s 18 of the Act, provided the mark is not prohibited by s 18(1)(b), s 18(1)(c) or s 18(1d) of the Act: IPONZ Trade Mark Practice Guideline “Absolute grounds distinctiveness: Section 18 of the Trade Marks Act 2002” at [6.5]. For example, the slogan WORLD FAMOUS IN NEW ZEALAND was held to be registrable in Coombe v Coca-Cola Amatil (NZ) Limited HC Auckland, CIV-2010-485-816, 8 April 2011. However, the facts of that case are very different to the facts of the present case. 108 Sexwax Incorporated, supra at [48]. 109 Sexwax Incorporated, supra at [48] and [65]. TM No.s 1026083 & 1026084 Page 20 of 49
assessment of reputation. In addition, while Apple CEOs have sometimes used the slogan “One more thing” in the context of launching Apple products, such as the Apple Watch, there is no evidence of the slogan being attached to any Apple goods. While it is not necessary for “One more thing” to be attached to the goods, the fact that there appear to be no goods bearing that slogan, at least on the evidence before me, is also important when assessing the level and nature of the awareness of the slogan. This is consistent with the Court of Appeal’s statement that the correct focus is on the awareness of the opponent’s mark in relation to prospective purchasers of the goods to which its mark attaches.110
57. In Pioneer Hi-Bred the reputation only needed to be established among people in the very specialised poultry breeding industry, so it was sufficient for the mark to be known to a small number of people. In the present case, the relevant goods are largely everyday products, including mobile phones, personal computers, and watches. Such goods are not used solely by specialists or those with an interest in, or particular knowledge of, technological products. Given the circumstances of trade, I consider it is insufficient for “one more thing” to be known only by a small specialist group such as those with expertise or a keen interest in technological products. Therefore, while there is likely to be an awareness of the slogan “One more thing” in New Zealand among Apple fans and retailers, and people with a sufficient interest, or expertise, in technological goods, who have viewed Mr Jobs’ and/or Mr Cook’s presentations, or read the full New Zealand online articles, or even attended the Apple events where the “One more thing” catchphrase has been employed, that does not meet the reputation threshold.
58. The onus is on Apple to establish on the balance of probabilities that the requisite awareness level has been reached for the “One more thing” slogan. Ultimately I consider that the reputation for the “One more thing” slogan in New Zealand is narrow. Having regard to the reputation attaching to the “One more thing” slogan, and in light of the potential products bearing the opposed marks, I consider there are insufficient individuals in New Zealand who are aware of the slogan used by Apple, and exposed to Swatch’s opposed marks, to engage s 17(1)(a).111 However, this issue is finely balanced and, therefore, I have also considered the
110 Sexwax Incorporated, supra at [65]. 111 To answer the question the Court of Appeal said should have been posed in the Sexwax case. TM No.s 1026083 & 1026084 Page 21 of 49
likelihood of deception or confusion, which is influenced by the extent of the reputation for “One more thing”.
Likelihood of deception or confusion
59. The test of likelihood of deception or confusion does not require that all persons in the market are likely to be deceived or confused. 112 But it is not sufficient that someone in the market is likely to be deceived or confused. A balance has to be struck, and this is ultimately a question of significance of the numbers in relation to the awareness of the mark in question.113 This is a fact-specific inquiry. It is a matter of assessing “practical business probabilities”, having regard to all the surrounding circumstances and the degree of similarity of the marks.114
60. The distinctions between deception and confusion are set out in Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd.115 Where the deception or confusion alleged is as to the source of the goods, deceived is equivalent to being misled into thinking that the goods bearing the opposed mark come from some other source and confused to being caused to wonder whether that might not be the case.116
61. The following factors are relevant to the exercise of comparing the marks:117
The two words must be judged both by their look and their sound.
The goods to which the marks are to be applied and the nature and kind of customer who is likely to buy these goods must be considered.
All the surrounding circumstances must be considered as well as what is likely to happen if each of the marks is used in a normal way as a trade mark for the goods of the respective owners of the marks.
112 Pioneer Hi-Bred, supra at 62. 113 Sexwax Incorporated, supra at [49]. 114 Sexwax Incorporated v Zoggs International Ltd [2015] 2 NZLR 1 at [49], citing Pioneer Hi-Bred Corn Company v Hy-Line Chicks Pty Ltd [1978] 2 NZLR 50. 115 Pioneer Hi-Bred, supra at 62. 116 Ibid, citing New Zealand Breweries Ltd v Heineken’s Bier Browerij Maatschappij NV [1964] NZLR 115, 141. 117 In re Pianotist Co.’s Application (1906) 23 RPC 774, 777, and as approved in New Zealand Breweries Ltd v Heineken’s Bier Browerij Maastschappij NV [1964] NZLR 115 at 139. TM No.s 1026083 & 1026084 Page 22 of 49
62. The focus is on the whole of each mark, and not a side by side comparison.118 Allowance must be made for consumers’ imperfect recollection.119 While, the totality of impression of the two marks is of fundamental importance,120 the court can properly look at an essential feature in both marks as being key.121 The focus is on the similarities, not the differences, between the marks.122
63. For the purposes of comparing the relevant marks, I am required to consider Apple’s “One more thing” slogan as it has in fact been used, and Swatch’s marks ONE MORE THING and SWATCH ONE MORE THING on a notional fair use basis.123
64. In the first instance, Swatch submits that no comparison of the trade marks is necessary, because Apple has no trade mark upon which to rely.124 However, I have already found, on the basis of the authorities referred to above, that Apple can rely on the slogan “One more thing” even if it is not a trade mark. The nature of the slogan and the manner in which it has been used is, however, relevant to the assessment of likely deception or confusion.
ONE MORE THING
Look and sound of Apple’s slogan and Swatch’s ONE MORE THING mark
65. In all material respects, Apple’s “One more thing” slogan and Swatch’s opposed mark ONE MORE THING are visually, aurally and conceptually identical. Apple
118 De Cordova v Vick Chemical Coy (1951) 63 RPC 103 at 106. 119 Rysta Limited’s Application (1943) 60 RPC 87 and De Cordova, supra at 106. 120 Polaroid Corp v Hannaford and Burton [1975] 1 NZLR 566 (CA). See also Sabel BV v Puma AG [1998] RPC 199 at 224. 121 See for example, the discussion in N V Sumatra Tobacco Trading Company v British American Tobacco (Brands) Incorporated, supra at [31]: [31] As Mr Brown submits, when making a s 17 comparison, while the focus is on the totality of the mark applied for, the court can properly look at a common or essential feature in both marks as being key. In Heineken, North P stated: While it is true that it is necessary to have regard to “the totality” of the proposed trade mark, yet often enough the real risk of confusion may lie in some common feature in the two labels which is liable to linger in the minds of persons requiring a particular kind of goods. Sometimes indeed it will be a word appearing in the labels which either looks or sounds the same. 122 VB Distributors Limited v Matsushita Electric Industrial Co Limited (1999) 9 TCLR 349, 357 – 358. Having said that, in Coca-Cola Canada v Pepsi-Cola Canada (1942) 59 RPC 127 at 133-134, it was held that “[W]here you get a common denominator, you must, in looking at the competing formulae, pay much more regard to the parts of the formulae that are not common – although it does not flow from that … that you must treat the words as though the common part was not there at all”.
123 Anheuser Busch Inc. v Budweiser Budvar National Corporation [2003] 1 NZLR 472 at [30]. 124 Written submissions, paragraph 67. TM No.s 1026083 & 1026084 Page 23 of 49
submits that the use of upper or lower case lettering is immaterial.125 Swatch appears to accept this, given it states that the mark ONE MORE THING and the words “one more thing” are clearly identical.126
Respective goods/services and the nature and kind of customer
66. Apple submits that Swatch’s applications encompass goods that are the same as or similar to Apple’s goods and services.127 In particular Apple claims to have an extensive global reputation as a computer and consumer electronics company,128 and it observes that Swatch’s class 9 goods comprise computer and consumer electric products.129
67. In contrast, Swatch submits that no comparison of goods is necessary, because Apple has not shown use of its alleged trade mark in respect of any specific or relevant goods or services.130 Swatch asserts that it is, therefore, impossible to compare the parties’ relevant goods, and impossible to assert the goods are similar.131
68. Section 17(1)(a) does not require the respective goods or services to be the same or similar.132 Section 17(1)(a) is concerned with confusion resulting from use of the opposed mark regardless of whether the goods are the same, similar, or entirely different.133 However, the risk of confusion may be higher where the goods and services are the same or similar.134 For the purposes of s 17(1)(a) I must consider the actual use of the opponent’s marks as against the notional fair use of the opposed marks.135
125 Written submissions, paragraph 35(iii). 126 Swatch’s written submissions, paragraph 67.2. 127 Written submissions, paragraph 35(iv). 128 Written submissions, paragraph 36 relying on La Perle, paragraphs 5 – 7. 129 Written submissions, paragraph 38. 130 Written submissions, paragraph 68. 131 Ibid. 132 Nexcorp Australia Proprietary Limited v Next Retail Limited [2016] NZIPOTM 17 at [80] citing Next Group Plc Australia Proprietary Limited [2016] ATMO 34 (14 June 2016) at [38]. Merely associated goods may be enough to create a likelihood of deception or confusion: The Council of Ivy Group Presidents, supra. See also P Sumpter Trade Marks in Practice (3rd ed, LexisNexis NZ Limited, Wellington, 2015) at p41 citing The Council of Ivy Group Presidents t/a The Ivy League v Pacific Dunlop (Asia) Ltd HC Wellington AP42/00, 3 October 2000 and Re Hack’s Application (1940) 58 RPC 91. 133 Nexcorp Australia Proprietary Limited v Next Retail Limited [2016] NZIPOTM 17 at [80] citing Next Group Plc Australia Proprietary Limited [2016] ATMO 34 (14 June 2016) at [38].
134 Sexwax Incorporated, supra at [60]. 135 See, for example, Disney Enterprises, Inc v Monster Energy Company [2014] NZIPOTM 39 at [101]. TM No.s 1026083 & 1026084 Page 24 of 49
69. On the evidence before me, Apple’s “One more thing” slogan has not been used on, or as badge of origin for, any particular goods or services. Instead, as discussed above, the slogan has been used as a presentation tool at Apple events to introduce a wide range of information, including the launch of Apple products. In my view this significantly reduces the likelihood of deception or confusion.
70. In the Sexwax case, the Court of Appeal refers to the higher risk of confusion where “the goods of the applicant and the opponent are the same or similar”. However, in that case, and other cases applying this statement, the comparison conducted by the Court or Commissioner is between the goods on which the opponent’s mark has actually been used and the opposed goods.136 As far as I am aware, no goods or services are sold under, or bearing, Apple’s “One more thing” slogan.
71. Even if the opponent’s goods that are relevant for comparison are not those bearing the opponent’s mark/slogan, the fact that Apple’s slogan has not been attached to any particular goods must be relevant to the assessment of likely deception or confusion. Further, even if the parties’ relevant goods are found to be the same or similar, that is not determinative of s 17(1)(a), particularly given the low reputation for the “One more thing” slogan and the other factors discussed below.
72. I consider that consumers of the relevant goods are likely to be circumspect and discerning given the goods in question are likely to be reasonably valuable, and concern image and status.137 Many of the opposed goods are also likely to be used, and relied on by purchasers, on a daily basis. The relevant goods are not everyday purchases and are unlikely to be bought frequently, regularly or on impulse. Given the likely cost of many of the relevant goods, I consider that purchasing decisions will, for the most part, be considered. Some of the goods are also likely to involve reasonably high involvement purchasing decisions given the fashion considerations involved.
136 In the Sexwax case the opponent’s mark had primarily been used on surfboard wax, t-shirts and some other clothing items. See also Disney Enterprises, supra at [102], and Nexcorp, referred to at above, where the Assistant Commissioner attempted to ascertain from the evidence the goods and services on which the opponent’s mark had been used in New Zealand, supra at [82]. See also Crowther v Apple Inc [2013] NZIPOTM 20 at [39] – [40]. 137 As was the case in TKS s.a. v Swatch AG (Swatch SA) Swatch Ltd) [2012] NZIPOTM 7 at [32]. TM No.s 1026083 & 1026084 Page 25 of 49
Surrounding circumstances
73. Mr La Perle’s declaration annexes an article that refers to Apple previously working in partnership with another technology company, Microsoft.138 Apple submits that this public fact increases the likelihood that people who are aware of Apple’s use of “One more thing” will be lead to believe that the opposed marks, when used in relation to Swatch’s goods, indicate an association with Apple.139
74. There is no evidence before me as to how many New Zealanders were aware of this partnership at the relevant date. Even if many were aware of this partnership, that does not mean that they would assume, upon encountering Swatch’s ONE MORE THING mark, that Apple had entered a similar partnership with Swatch. Microsoft is a very different kind of company to Swatch. Microsoft, like Apple, is a technology company,140 whereas Swatch is primarily a watchmaking company.141 While Apple sells the Apple Watch, it is a smartwatch consistent with Apple’s technology focus, rather than a traditional watch of the kind Swatch has sold over many years. An Apple partnership between two technology companies seems far more likely than Apple partnering with a traditional watchmaking company.
75. In addition, the evidence shows there is a strong rivalry between Apple and Swatch, including legal proceedings, particularly in relation to the use of various trade marks.142 In my view, those consumers who take an interest in Apple’s partnerships are also likely to be the kind of consumers who would take an interest in news surrounding Apple’s disputes with Swatch.
76. I accept that some New Zealand consumers, who are aware of Apple’s partnership with Microsoft and have heard of Apple’s use of the slogan “One more
138 La Perle, exhibit TLP-2. At the hearing, counsel for Apple also referred to two other “partnerships” with Apple, one being with Dragon Systems (another technology company), which brought its voice-recognition software to the Mac: La Perle, exhibit TLP-7. However, my comments about the partnership between Apple and Microsoft apply equally, if not more so, to these “partnerships”. The article is dated 24 September 2011 and appeared online on www.marketwatch.com under the headings “The day Steve Jobs saved Apple ... Deal with Microsoft in 1997 was crucial”. 139 Written submissions, paragraph 35(v) and 41. 140 Written submissions, paragraph 35(v) and La Perle, exhibit TLP-2. 141 Aebi, paragraph 4. 142 La Perle, paragraphs 33 – 34, and Aebi, exhibit JA-16. While these articles all post date the relevant date by a few months, several of the articles refer to Swatch’s objection to Apple’s application to register the trade mark IWATCH, a dispute which took place approximately a year before the relevant date: Aebi, exhibit JA-16. TM No.s 1026083 & 1026084 Page 26 of 49
thing”,143 may wonder, when seeing Swatch’s goods bearing the opposed marks, whether Apple has entered into a similar partnership with Swatch, and I have taken this into account when assessing the likelihood of confusion. However, for the reasons given above, and based on the limited evidence before me, I consider the number of potential purchasers in that category is far from sufficient to reach the threshold for likely deception or confusion under s 17(1)(a).
77. A further surrounding circumstance, this time raised by Swatch, is that Apple’s oppositions to Swatch’s registration of the trade mark ONE MORE THING were unsuccessful in Norway, the Czech Republic and Turkey.144 While some of the reasoning in these cases is consistent with my findings, each case turns on its own unique factual circumstances and the legal framework of the foreign jurisdictions within which each case is decided. Therefore, I have not relied on these foreign decisions.
Overall assessment of likely deception and confusion
78. As stated, it is necessary to consider the level of reputation of Apple’s “One more thing” slogan, and with whom it has that reputation, when assessing likely confusion.145 The stronger the reputation, the greater the likelihood of deception or confusion.
79. I have already found that the awareness of the “One more thing” slogan is low, and primarily has a reputation as a presentation technique adopted by Steve Jobs rather than as a badge of origin for any Apple goods. Importantly, I also consider that the group of consumers most likely to be aware of Apple’s use of “One more thing” is also the group of technologically focused consumers that is most likely to be discerning and brand aware when purchasing the relevant goods.
80. In my view, potential purchasers of the opposed goods will fall into two categories. The first are those who are aware of Apple’s use of “One more thing”. These consumers are likely to be interested in technology and/or be Apple “fans”, and therefore be vigilant about the origin of the opposed goods and particularly
143 On the basis of the evidence before me, and for the reasons discussed above, this is only a small group of consumers. 144 Written submissions, paragraph 71. 145 Sexwax Incorporated, supra at [65] and [77]. TM No.s 1026083 & 1026084 Page 27 of 49
observant.146 The second group of consumers are those who are not aware of Apple’s use of “One more thing”, and who therefore cannot be deceived or confused about whether the opposed goods originate from, or are associated with, Apple. As Richardson J observed in Pioneer, the use of the applicant’s mark could not lead to deception or confusion if the opponent’s mark is unknown.147
81. In my view, Apple’s “One more thing” slogan also has a very low level of distinctiveness in New Zealand. It is an everyday English phrase, which undoubtedly predates any use by the character “Inspector Columbo” or Apple CEOs.148 The more distinctive the earlier mark, the greater the likelihood of confusion.149 Therefore, the minimal distinctiveness of Apple’s “One more thing” slogan results in a lower likelihood of confusion.
82. Given most, if not all, the goods in issue are sold to the general public for consumption and domestic use, I am entitled to take into account my own experience and reactions as a member of the public when considering whether purchasers are likely to be deceived or confused by use of Swatch’s ONE MORE THING mark on the opposed goods.150 My reaction is that, if I were exposed to the ONE MORE THING mark on the opposed goods, I would not be caused to wonder whether, let alone be misled into thinking that, the opposed goods originated from Apple or were in some way associated with Apple.
83. Overall, I am satisfied that if Swatch uses the mark ONE MORE THING on the opposed goods, in a normal and fair manner, such use would not be likely to cause deception or confusion amongst a substantial number of persons.
SWATCH ONE MORE THING
84. The above reasoning applies equally to the assessment of likely deception or confusion for the SWATCH ONE MORE THING mark. In addition, this opposed
146 Mr La Perle refers to “fan videos” evidencing the use of “One more thing” at Apple events: La Perle, paragraphs 21 – 22. One of the articles referred to by Mr La Perle also describes “One more thing” 147 Pioneer Hi-Bred, supra at 63. 148 Apple’s written submissions, at paragraph 33, assert that the phrase “One more thing” has acquired a secondary meaning, which implicitly acknowledges that the phrase has an ordinary primary meaning. 149 Sabel BV v Puma AG [1998] RPC 199. 150 Pioneer Hi-Bred, supra at 62. TM No.s 1026083 & 1026084 Page 28 of 49
mark is even less similar than Swatch’s ONE MORE THING mark is to Apple’s “one more thing” slogan. This is because:
a. The word SWATCH is highly distinctive, and non-descriptive of the opposed goods;
b. The term SWATCH is the dominant and essential feature of the opposed mark compared with the rest of the mark, which is an ordinary English phrase;
c. SWATCH is the first word of the mark, and the first word is usually the most important for comparison,151 although this is only a general rule.152
85. Overall, I consider the similarities between the SWATCH ONE MORE THING mark and Apple’s “One More Thing” slogan are minimal. Therefore, there is even less likelihood of this opposed mark deceiving or causing confusion than there is with Swatch’s ONE MORE THING mark.
86. Further, Swatch’s evidence appears to establish a reputation for the name “Swatch” in New Zealand as at the relevant date.153 This is not a case where an unknown or small applicant is attempting to enter the New Zealand market with a completely new opposed mark that will compete with an opponent’s mark that has a well-established reputation in New Zealand. On the evidence before me, Swatch has a far greater reputation in New Zealand than Apple’s “One more thing” slogan.
87. I consider that, having regard to the narrow reputation acquired by the “One more thing” slogan, if the mark SWATCH ONE MORE THING is used in a normal and
151 N V Sumatra Tobacco Trading Co v British American Tobacco (Brands) Incorporated, supra at [32] citing London Lubricants (1920) Limited’s Application (1925) 42 RPC 264 at 279. In London Lubricants Sargent LJ observed that the “tendency of persons using the English language to slur the termination of words also has the effect necessarily that the beginning of words is accentuated in comparison and, in my judgment, the first syllable of a word is, as a rule, far more important for the purpose of distinction” supra at 279. 152 See the comments of Ronald Young J in Telecom IP Ltd v Beta Telecom Ltd [2006] NZHC 1132 where he stated that “I have no difficulty in accepting as a general rule the first syllable of the first word or the first word in a phrase may be the more important. However, this proposition is not as the respondent has expressed it, some form of principle of law. It is no more than an observation about speech patterns and emphasis. However, in each case the actual phrase or words, as well as their place, will be significant” at [36]. 153 Aebi, paragraphs 24 – 31 and exhibits JA-10 to JA-14. TM No.s 1026083 & 1026084 Page 29 of 49
fair manner in connection with the opposed goods it will not be reasonably likely to cause deception or confusion amongst a substantial number of persons.
Finding
88. Use of Swatch’s opposed marks is not likely to deceive or cause confusion. Accordingly, Apple’s s 17(1)(a) ground of opposition is unsuccessful in both proceedings.
Section 17(1)(b) ground – contrary to New Zealand law?
89. Section 17(1)(b) of the Act provides that:
The Commissioner must not register as a trade mark or part of a trade mark any matter - …the use of which is contrary to New Zealand law or would otherwise be disentitled to protection.
90. Apple claims that use of the opposed marks would be contrary to law or otherwise disentitled to protection in any court because such use would:154
a. constitute passing off; and
b. contravene the prohibitions in sections 9, 10, and 13 of the Fair Trading Act 1986.
91. The evidential thresholds for establishing breaches of the Fair Trading Act and passing off are higher than the threshold for establishing that use of a mark is likely to deceive or cause confusion under s 17(1)(a) of the Act.155
92. Apple acknowledges that the passing off and Fair Trading Act grounds both require that, at the relevant date, there was a reputation in “One more thing” associated with Apple, against which Swatch’s conduct in using the opposed marks could be measured.156
154 Amended notices of opposition, paragraphs 6 and 7. 155 Daimler AG (formerly DaimlerChrysler AG) v Sany Group Co Limited [2014] NZHC 532 at [49] – [51]. See also The Scotch Whisky Association, supra at [70](b) and [85]; K-Swiss Inc v Federation of the Swiss Watch Industry FH (2009) 83 IPR 635, supra at [51]-[53] referring to New Zealand Milk Brands Ltd v NV Sumatra Tobacco Trading Co HC Wellington CIV-2007-485-2485, 28 November 2008 at [59]-[60]. 156 Written submissions, paragraph 48. Apple also appeared, implicitly, to accept that it is only if the opposed marks are likely to deceive or confuse a substantial number of persons under s 17(1)(a), that use of those marks may also constitute misleading or deceptive conduct or passing off: written submissions, TM No.s 1026083 & 1026084 Page 30 of 49
93. I have already found that the narrow extent and nature of Apple’s reputation for “One more thing” is such that use of the opposed marks is not likely to deceive or confuse under s 17(1)(a). Accordingly, I am also satisfied that use of the opposed marks would not amount to passing off or a breach of ss 9, 10, or 13 of the Fair Trading Act.
Finding
94. The s 17(1)(b) ground of opposition has not been made out in either proceeding.
Section 17(2) ground – bad faith?
95. The Commissioner must not register a trade mark if the application is made in bad faith.157 The bad faith test under s 17(2) is not confined to dishonesty, and may be established by dealings that fall short of reasonable standards of commercial behaviour.158 The test for bad faith combines a subjective element, what the particular owner knew, and an objective element, what ordinary persons adopting proper standards would think.159 The subjective element of the test relates only to the owner’s knowledge.160 The fact that the owner thinks his or her behaviour is acceptable is no defence.161
96. In Zoggs International Limited v Sexwax Incorporated [2013] NZHC 1494, Simon France J held that:162
The fact that the bad faith test may be satisfied by something less than dishonesty should not mask the fact that it remains a serious allegation, requiring clear evidence
paragraph 50 and oral submissions at the hearing. At the hearing, counsel for Apple submitted that the reason Apple relies on the s 17(1)(b) ground of opposition is that it considers that the get up or manner of use of the opposed marks would not make any differece to the inherent risk if the opposed marks are used on the opposed goods. 157 Section 17(2) of the Act. 158 Growmax Plasticulture Ltd v Don & Low Nonwovens Ltd [1999] RPC 367 at 379. 159 Neumann v Sons of a Desert SL HC Auckland CIV-2007-485-212, 5 November 2007 at [33]. 160 Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 at [71]. 161 Ibid. 162 At [36]. In TomTom Communications Ltd v TomTom International LB.V. [2015] NZHC 3333 Woodhouse J also found the following observations from Royal Enfield (supra) apposite: “An allegation that a trade mark has been applied for in bad faith … is an allegation of a form of commercial fraud. A plea of fraud should not be lightly made (see Lord Denning MR in Associated Leisure v Associated Newspapers [1970] 2 QB 450 at 456) and if made should be distinctly alleged and distinctly proved. It is not permissible to leave fraud to be inferred from the facts see Davy v Garrett (1878) 7 Ch D 473 at 489)”: at [102]. Woodhouse J acknowledged there are differences between pleadings in a conventional civil action alleging fraud and those required in opposition to an application for a trade mark but was nevertheless satisfied that the observations as to what is required having regard to the gravity of the allegation are applicable: at [103]. In particular, His Honour noted that Mr Thorley QC’s observation in Royal Enfield concerning inference is “directly applicable”: at [103]. TM No.s 1026083 & 1026084 Page 31 of 49
and careful analysis. Ultimately, the standard of proof is the balance of probabilities but I consider there remains value in the words of Mr Thorley QC, the Appointed Person, in Royal Enfield Trade Marks [Royal Enfield Motorcycles v Holder [2002] RPC 24 at [31]], where of a bad faith allegation he observed:
“It should not be made unless it can be fully and properly pleaded and should not be upheld unless it is distinctly proved and this will rarely be possible by a process of inference”.
97. It may, however, be proper to draw inferences where they are not the result of conjecture or guesswork.163
98. Apple’s bad faith ground of opposition appears to have three parts, given Apple pleads that:164
a. At the date of its applications, Swatch did not have an intention to make genuine use of the opposed marks in New Zealand in relation to all of the specified goods, which are very broad.
b. Swatch has made a wrongful claim to ownership of the opposed marks because a dominant element of those marks (ONE MORE THING) is well known as being Apple’s trade mark and slogan.
c. Swatch’s applications to register the opposed marks have been made with the sole purpose of preventing or deterring Apple from using its trade mark and slogan ONE MORE THING.
99. Swatch denies these bad faith allegations and, amongst other things, pleads that it intends to use the opposed marks in respect of all the specified goods in classes 9 and 14.165
163 Target Fixings Ltd v Brutt [2007] RPC 463 at [28]-[30]; where Richard Arnold QC sitting as the Appointed Person stated “… I do not believe Mr Thorley [the Appointed Person in the Royal Enfield case (supra)] meant to say that inference has no part to play in the proof of bad faith. As with the proof of fraud, it may be necessary and proper to rely upon inference. An example of this is Ferrero SpA’s Trade Marks [2004] RPC 29. Of course it depends on what is meant by “inference”. An “inference” was defined by Street C.J. in Gurnett v Macquarie Stevedoring Co Pty (1955) 72 WN (NSW) 261 as, “a reasonable conclusion drawn as a matter of strict logical deduction from known or assumed facts.” Understood in this way, the drawing of inferences is a key mode of judicial reasoning. It is to be distinguished from mere conjecture or, as Street C.J. put it, a guess”. 164 Amended notices of opposition, paragraphs 12 – 14. Having said that, Apple’s written submissions do not comfortably fall within these three categories and, in essence, seem focused on the intention to use aspect and the claim that the sole purpose of Swatch’s applications was to prevent or deter Apple from using the “One more thing” slogan/mark. TM No.s 1026083 & 1026084 Page 32 of 49
Genuine intention to use?
100. An applicant for an international registration which designates New Zealand must be the owner of the trade mark in New Zealand, and have an intention, at the relevant date, to use the mark in New Zealand for the goods and services specified in the application.166
101. The fact that an applicant has filed a trade mark application is prima facie evidence of its intention to use the mark.167 In Lacoste v Crocodile International Pte Ltd [2015] NZHC 2432, 6 October 2015 Clifford J described the approach to be adopted at the application/opposition stage:168
At the point of application it is appropriate to adopt a broad interpretation of intention to use. In Effem Foods v Cadbury, Miller J accepted that filing a trade mark application is prima facie evidence of intention to use, and rejected any idea of interpreting the legislation in terms of specific burdens of proof. In Effem Foods, the presumption was rebutted by the applicant’s own evidence that it applied for registration as a defensive measure.
102. In New Zealand Milk Brands Limited v Anchor Foods Pty Limited [2011] NZIPOTM 14 the Assistant Commissioner found that the applicant only had a sufficiently definite intention to use the opposed mark on some of the goods set out in the specifications (not on the non-dairy products included in the specifications). In order to succeed on the s 17(2) bad faith ground, the Assistant Commissioner made it clear that the opponent must, however, go one step further
165 Counter-statements, paragraphs 13 citing Effem Foods Limited v Cadbury Limited HC Wellington CIV- 2005-485-1487, 21 March 2007 at [34] and Aston v Harlee Manufacturing Co [1960] 103 CLR 391, 401 at [21]. 166 Regulation 7 of the International Regulations, Regulation 44(j) of the Regulations, and s 32 of the Act. Apple also refers to this requirement being stated in the WIPO application form MM2 at [11], footnote 2, and Rule 7(2) of the Common Regulations under the Madrid Agreement concerning the International Registration of Marks and the Protocol relating to that Agreement. 167 Effem Foods Limited v Cadbury Limited HC Wellington CIV-2005-485-1487, 21 March 2007 at [34] citing Aston v Harlee Manufacturing Co [1960] 103 CLR 391, 401 in which Fullager J held that the making of the application itself was to be regarded as prima facie intention to use; it was not for the Registrar to institute an inquiry as to the intention of any applicant, and on an opposition the burden of proving the absence of intention rests on the opponent. The Effem Foods case was also cited with approval in Lacoste v Crocodile International Pte Limited HC Wellington CIV-2009-485-2536, 1 March 2011 at [45]. 168 At [134] (footnotes omitted). In another Lacoste v Crocodile International case, HC Wellington CIV- 2009-485-2536, 1 March 2011 at [44], Simon France J stated that he was not aware an applicant must identify, or even have in mind, at the time of application, all the ways in which it may use the mark. That case involved an appeal by Lacoste against the refusal of its application to register the trade mark CROCODILE, rather than an opposition proceeding. However, I consider the statements of Simon France J in that case are still relevant to Apple’s opposition, which must be assessed as at the date Swatch’s trade mark applications were filed. TM No.s 1026083 & 1026084 Page 33 of 49
and establish that the circumstances surrounding the trade mark applications, in some way, fell short of reasonable standards of commercial behaviour.169
103. In dismissing the bad faith ground, the Assistant Commissioner referred to the applicant’s evidence that by including non-dairy goods in the specification the applicant was effectively keeping open the possibility of using the opposed mark on non-dairy goods because it had a large range of foodstuffs in its goods portfolio.170 The Assistant Commissioner observed that this was not a case where using the opposed mark on, or in relation to, non-dairy goods was out of the question.171
104. In Trade Marks in Practice, the author observes that:172
There is in s 32(2) [of the Act] prohibition against a large variety of goods or services which IPONZ may raise as an objection in the examination process .... In this case the applicant must justify the broad specification by the use or intended use of the sign in question. There is no reason in principle why s 17(2) would not be available to an opponent in opposition proceedings ... , provided there was evidence of bad faith tending to demonstrate, for example, that an applicant was seeking registration of a widely drawn specification for some dishonest or unfair purpose. But there are many reasons why an application may have a very broad specification and, apart from genuine use or intention to use, one may be simply that the specification was clumsily drawn, which would not, surely, amount to bad faith. Or there may simply be no evidence of “bad faith”.
105. Counsel for Apple referred to the United Kingdom decision of Red Bull GmbH v Sun Mark Limited.173 In that case Arnold J concluded that Red Bull did not have any concrete intention to use the relevant mark in relation to the goods and services in classes 32, 33 and 43 in the UK as at the relevant dates, but that it did contemplate the possibility of using the mark at some future point, most likely in
169 New Zealand Milk Brands, supra at [42]. 170 New Zealand Milk Brands, supra at [45.2]. 171 Ibid. An allegation of bad faith raised in an invalidity application, and directed at the breadth of the specification of services, was also unsuccessful in Total Limited v Youview TV Limited [2014] EWHC 1963 (Ch) [2015] FSR 7 as cited in Sumpter, Trade Marks in Practice (3rd ed), supra at p57. Sales J found that it was legitimate for the applicant to want to expand into related areas in the future, and stated (at [73]) “... This is not a case in which a type of goods or services is specified where there is no intention on the part of the applicant to make any use at all of the mark in relation to that type of good or service. In that respect, it is to be contrasted with a case like DEMON ALE Trade Mark [2000] RPC 345, in which the applicant applied to register the trade mark for beer, but admitted that he had no intention of selling beer and was therefore found to infringe the good faith requirement in section 3(6) of the Act”. 172 P Sumpter, Trade Marks in Practice (3rd ed, LexisNexis, Wellington, 2015) at p57. 173 [2012] EWHC 1929 (Ch). TM No.s 1026083 & 1026084 Page 34 of 49
relation to energy drinks, in countries which might include the UK.174 Despite this finding, His Honour was not persuaded that Red Bull acted in bad faith. Arnold J considered Red Bull had a sufficient intention to use the mark in the UK to be able to claim in good faith that it intended to use the mark at least in relation to energy drinks.175 His Honour was more doubtful about the other goods and services specified in its applications, although His Honour acknowledged that it could not be said that those goods/services were wholly removed from Red Bull’s area of commercial interest, and it was unnecessary for him to reach a conclusion on this point.176 Arnold J also observed that:177
... while it is possible to launch a product under a trade mark, build up a reputation for it and only then seek to register the trade mark, many traders prefer to obtain the protection of registration first and then launch the product. This is particularly common for traders who operate on an international basis, especially if they are not in a position to launch the product simultaneously in all territories of interest and thus must roll the product out across those territories over a period of time. Otherwise, they take the risk that, if the product is successful in the initial territories, the trade mark will be registered by other parties in other territories.
106. Apple appears to rely on the following in support of its allegation that Swatch did not have a genuine intention to use the opposed marks on the opposed goods (in classes 9 and 14) as at the relevant date:
a. Ms Aebi (Swatch’s Chief Financial Officer and Vice President) describes Swatch as “a multinational company primarily active in the manufacture and sale of watches, watch movements and components, and jewellery”.178 Apple observes that no other fields of activity are disclosed in Ms Aebi’s affidavit.179 However, I note Ms Aebi’s use of the word “primarily”, which clearly means that the goods referred to in that statement in her affidavit are not the only goods Swatch sells. An omission by Ms Aebi to refer to Swatch’s other fields of activity does not establish that Swatch has no other areas of activity or lacks an intention to enter other fields.
174 Red Bull, supra at [191]. 175 Red Bull, supra at [192]. 176 Red Bull, supra at [193] and [158]. 177 Red Bull, supra at [177]. 178 Aebi, paragraph 4. 179 Written submissions, paragraph 65. TM No.s 1026083 & 1026084 Page 35 of 49
b. There is no indication that products other than watches and components for watches have been advertised for sale and sold in New Zealand.180 The only products illustrated in Ms Aebi’s evidence are watches.181 I note, however, that Ms Aebi’s affidavit states that Swatch sells digital watches with a touch screen (The Touch Series).182
c. Swatch has not filed any evidence about plans to use, manufacture, market and/or offer for sale, watches under the opposed marks, or goods other than watches and components and accessories for watches.183
d. Apple submits the class 9 goods, and class 14 goods other than watches, clocks and parts and accessories for watches and clocks, are goods that “do not have the slightest connection with [Swatch’s] actual economic activity” and are not “commercially logical” goods for Swatch.184
e. Apple contends that Swatch’s claimed reason for adopting a slogan first used in the “Columbo” television series is hard to justify given the series stopped in 2003 (well before the relevant date).185
f. There is no evidence that ISWATCH watches, or watches from Swatch’s “007 Williams” or “One More Time” Collections were ever advertised for sale, or even known about, in New Zealand.186 Apple submits this raises doubts about Swatch’s assertion that it intended to use the trade marks in New Zealand.187
g. Mr La Perle refers to a blog post that describes Swatch’s attempt to justify the ONE MORE THING trade mark as “a silly explanation”.188 I consider this evidence is irrelevant as it is not the role of such commentators to determine whether Swatch has a genuine intention to use the opposed
180 Written submissions, paragraph 66. 181 Aebi, exhibits JA-05 – 07, 09, 12, 14, 18 and 19. 182 Aebi, paragraph 16. 183 Written submissions, paragraph 67 - 68. 184 Written submissions, paragraph 68(iii) citing Red Bull GmbH v Sun Mark Limited [2012] EWHC 1929 (Ch) at [141] and [148]. 185 Aebi, exhibit JA-15 and written submissions, paragraph 68(iv). 186 Written submissions, paragraph 68(vi), referring to Aebi, exhibits JA-18 and JA-19, and Russell 2 and 3. 187 Ibid. 188 Written submissions, paragraph 68(v) referring to La Perle, paragraph 35. Mr La Perle also refers to two other online articles that state “Apple’s watch competitor Swatch is trying to poke Apple in the eye by trade marking ‘One More Thing ...” and “Swatch recently pulled off one helluva troll job this past week when it acquired the trademark rights to “One more thing” ...: La Perle, paragraphs 33 – 34. TM No.s 1026083 & 1026084 Page 36 of 49
marks. Such views are non-expert opinions that have been reached without the evidence before me.
107. In addition to the prima facie evidence of Swatch’s trade mark applications, Swatch has provided the following evidence of its intention to use the opposed marks:
a. Ms Aebi has given evidence on oath that Swatch has filed the New Zealand trade mark applications for the opposed marks with the intention of using those marks in relation to its products.189
b. Swatch has launched previous theme-based collections, organised around a common topic, period or style, and named with a phrase or word referring to the theme.190 For example:
i. Swatch launched a range of theme-based collections in 2015, including APRES-SKI (based on the atmosphere and style of winter evenings in the mountains), STREET ENERGY (induced by fast-paced cities and urban codes), GRÜEZI ALL! (inspired by iconic Swiss values, traditions and styles), EXOTIC CHARM (relaxed and inviting to travel), TECH-MODE (clean, classic and industrial), and SPORT MIXER (dashing and dynamic).191
ii. In 2008, Swatch released a “James Bond 007 Villain Collection” drawing inspiration and names from 22 James Bond villains.192
c. Ms Aebi says that Swatch’s trade mark applications for the opposed marks are consistent with Swatch’s longstanding and current naming pattern.193 This includes Swatch’s 1991 limited edition release of a trio of
189 Aebi, paragraph 39. This is consistent with Swatch’s counter-statements, which state that Swatch has filed the opposed marks with the view of using them in respect of the specified goods and services: paragraphs 36 and 13. 190 Aebi, paragraph 34. 191 Ibid. Ms Russell conducted Google searches for mentions of these collections in New Zealand prior to 22 May 2015, and she says the results did not show any use of the names prior to 22 May 2015: Russell 2, paragraph 4 and exhibit SER-6. This evidence does not appear to take into account, however, that Swatch products are available in New Zealand online from www.swatch.com and in retail stores: Aebi, paragraphs 18 -21 and exhibits JA-4 to JA-7. Regardless, Swatch is not required to show use of these lines in New Zealand. What is important is any evidence supporting an intention to use in New Zealand. 192 Aebi, paragraph 36 and exhibit JA-18. 193 Aebi, paragraph 38. TM No.s 1026083 & 1026084 Page 37 of 49
watches under the name “One More Time”.194 Swatch submits this is very similar to “one more thing”.195
d. Ms Aebi observes that Swatch has openly declared that its ONE MORE THING mark is a reference to Inspector Columbo’s catchphrase, and to the “film noir”.196 Ms Aebi claims that the opposed marks, with the corresponding association to criminal television snows and Inspector Columbo, would be perfectly suited to a film noir inspired theme-based collection.197
108. I consider Ms Aebi’s evidence regarding Swatch’s intention to use the opposed marks is plausible and I have not been persuaded to doubt the veracity of her evidence, which was given on oath. I am not aware of any attempt to challenge Ms Aebi’s evidence by way of cross-examination.198 In my view, the evidence and submissions filed on behalf of Apple do not displace the presumption of an intention to use. This is not a case where a part of the specifications do not have the slightest connection with Swatch’s actual economic activity or where it would appear unimaginable that Swatch would ever be able to expand.199 I am also not persuaded that the specifications for Swatch’s opposed marks are without commercial logic or that it is out of the question that Swatch will use the opposed marks on all of the specified goods.
109. Even if I am wrong, and Swatch is found to have no genuine intention to use the opposed marks for the opposed goods, a finding of bad faith also requires circumstances surrounding Swatch’s applications that fall short of reasonable standards of commercial behaviour.200 In my view, there are no such circumstances in the present case.
194 Aebi, paragraph 37. 195 Written submissions, paragraph 51.3. 196 Aebi, paragraph 33 and exhibit JA-16. 197 Aebi, paragraph 35. 198 In New Zealand Institute of Chartered Accountants v The Chartered Institute of Management Accountants [2015] NZHC 818, Brown J referred to authorities and academic commentary suggesting bad faith may be an appropriate circumstance for cross-examination. Brown J observed that in Alliance & Leicester Plc’s Trade Mark Application [2002] RPC 29 Ferris J considered it was essential that the opportunity should be available to put to the witness the facts and matters relied on as disclosing bad faith; cited at [85] of New Zealand Institute of Chartered Accountants. 199 Adopting the terminology used in Trillium Trade Mark (Case C00005347/1, 28 March 2000) as cited by Arnold J in Red Bull, supra at 141. 200 New Zealand Milk Brands, supra at [42]. TM No.s 1026083 & 1026084 Page 38 of 49
110. As an aside, I observe that these opposition proceedings are not Apple’s only opportunity to challenge the scope of the specifications for the opposed marks. Non-use is a ground for revocation under s 66(1)(a), where the owner has not put the mark to genuine use for a continuous period of three years or more.201 Section 68(1) of the Act provides that “[i]f grounds for revocation exist in respect of only some of the goods ... in respect of which the trade mark is registered, revocation relates only to those goods ...”. Apple may, therefore, apply for a full or partial revocation if it considers the requirements of s 66(1)(a) have been met.202 Provided there is no bad faith, the revocation process is the proper time at which to hold a detailed inquiry as to the nature of the applicant’s use since it is an impossible burden for an applicant to establish how it intends to use the trade mark at the time the application is made.203
Wrongful ownership claim?
111. The requirements for a legitimate claim to ownership are that:204
a. There is no prior use or prior assertion of proprietorship.
b. The applicant is using or has a sufficiently definite intention to use the mark.
c. There is no fraud or breach of duty involved.
112. I have already addressed the issue of intention to use above, and there is no evidence to support an allegation of fraud or a breach of duty. Therefore, the only
201 Such “genuine use” must be in relation to goods or services in respect of which the mark is registered: s 66(1)(a). 202 By way of example, in Digital Data Communications GMBH v Level 1 Entertainment LLC [2011] NZIPOTM 18 Digital Data established use of the relevant mark for some, but not all, of the goods covered by the mark. Accordingly, the partial revocation application was successful for those goods for which the relevant mark had not been used for the relevant period. The specification for the relevant mark included a wide range of computer related goods in class 9. The Assistant Commissioner found that the specified goods for the relevant mark should be restricted to “computer networking products”, which were not specifically referred to, or described as such, in the original specification. 203 Intellectual Property Law in New Zealand (Thomson Reuters New Zealand Ltd, Wellington) at 7.4.1(2) (online) citing Lacoste v Crocodile International Pte Limited HC Wellington CIV-2009-485-2536, 1 March 2011 at [48]. 204 Aqua Technics Pool and Spa Centre New Zealand Limited v Aqua-Tech Limited [2007] NZCA 90 at [15], following Newnham v Table for Six (1996) Ltd (1998) 44 IPR 269 at 278 (HC) citing Brown and Grant, The Law of Intellectual Property in New Zealand (1989) at [2.8]. Those authorities applied section 26(1) of the former Trade Marks Act 1953. However, decisions relating to claims to “proprietorship” under the old Act continue to apply directly to “ownership” issues under the current Act: The North Face Apparel Corporation v Sanyang Industry Company Limited [2014] NZCA 398 at [20] referring to Ian Finch (ed) James and Wells Intellectual Property Law in New Zealand (2nd ed, Thomson Reuters, Wellington, 2012) at 417. TM No.s 1026083 & 1026084 Page 39 of 49
remaining ownership requirement to consider is whether there is any prior use or prior assertion of proprietorship by Apple for ONE MORE THING.205
113. At the hearing, counsel for Apple submitted that the evidence shows Apple has made trade mark use of the slogan “One more thing” in New Zealand in relation to its goods and services, and that this use pre-dates the relevant date.206 Swatch, on the other hand, submits that Apple has not provided any evidence of trade mark ownership in New Zealand, nor any evidence of use of the phrase “one more thing” as a trade mark, in a trade mark sense, or in relation to any specific goods or services.207
114. The following propositions, concerning prior use of a foreign mark, appear to be well established:208
a. Use of the mark by the opponent outside New Zealand is irrelevant for the purpose of establishing proprietorship in New Zealand.209
b. The use relied on by the opponent must be in relation to goods for the purpose of indicating a connection in the course of trade between the goods, with respect to which the marks are used, and the opponent.210
c. Actual trade or dealing in goods bearing the trade mark in New Zealand is not necessary; nor is it necessary that the goods be in New Zealand at the time the mark is used.211 It may suffice that goods, which have not reached New Zealand, have been offered for sale here under the mark or that the mark has been used in an advertisement of the goods in the course of trade because in such instances it is possible to identify an actual trade or offer to
205 Unsurprisingly there is no evidence of Apple using the opposed mark SWATCH ONE MORE THING, or asserting proprietorship of that mark, and therefore that mark is not relevant for the purposes of Apple’s claim of wrongful ownership. 206 Apple’s counsel submitted that Mr La Perle’s evidence shows instances of use of the slogan in relation to particular products such as the Apple Watch and the MacBook Pro: La Perle, paragraphs 20 and 23. Counsel also referred to the “One more thing” slogan as an umbrella trade mark used in relation to all its goods and services on the basis it is so closely associated with Apple and its business. 207 Written submissions, paragraph 47. Swatch asserts that Apple’s evidence in respect of New Zealand is particularly lacking: paragraph 47. 208 The full list of factors are summarised in Melco New Zealand Limited v Oasis Corporation [2002] NZIPOTM 42 at p10 and cited in Trade Marks in Practice (3rd ed), supra at p55. 209 This is the case even if the overseas use is extensive: Melco, supra at p10 citing Blackadder v The Goods Roads Macinery Company Inc 38 CLR 332, Malibu Boats West Inc v Catanese (2000) 51 IPR 134 at [26], and Settef SpA v Riv-Oland Marble Co (Vic) Pty Ltd (1987) 10 IPR 402 at 413 - 415. 210 Melco, supra at p10, citing Moorgate Tobacco Co Ltd v Philip Morris Ltd 156 CLR 414, Malibu, supra at [27], and re Registered Trade Mark “Yanx” (1951) 82 CLR 199 at 203 – 204. 211 Melco, supra p10 citing Moorgate, Riv-Oland, Yanx, and Malibu. TM No.s 1026083 & 1026084 Page 40 of 49
trade in goods bearing the mark or an existing intention to offer or supply goods bearing the mark in trade.212
d. Advertising in foreign publications will not, without more, constitute sufficient use to support a claim for ownership of a trade mark.213
115. If an opposition is based on a bad faith ground under s 17(2) of the Act then some form of bad faith will also need to be made out by an opponent when disputing ownership of a mark.214 Appropriation of a foreign mark is not, of itself, sufficient to establish bad faith.215 If an applicant knew of the overseas use of a mark, yet there was no use in New Zealand, offer to supply, or similar, and no bad faith factors existed, then the applicant could be said to have made a proper claim to ownership.216
116. In light of the evidence already detailed above, I consider that Apple has not used the “One more thing” slogan in relation to goods or services, for the purpose of indicating a connection in the course of trade between those goods/services and Apple. I acknowledge that the “One more thing” catchphrase has been used by Apple’s CEOs in the context of presentations, and that in some of these presentations the phrase has been used as a technique for introducing new Apple goods or services. When Tim Cook used the catchphrase “One more thing” to preface his announcement unveiling the Apple Watch product at an Apple event in 2014, the phrase was used as a presentation technique, presumably paying tribute to Steve Jobs. In my view, the slogan was not used for the purpose of indicating a connection in the course of trade between that watch and Apple.
117. I am, therefore, satisfied that Swatch has not made a wrongful claim to ownership, let alone acting in bad faith by claiming ownership in its applications to register the opposed marks.
212 Melco, supra at p10 citing Yanx, Moorgate, and Malibu. 213 Melco, supra at p10 citing Malibu at [33] – [34]. Assistant Commissioner Brown QC, as he was then, also stated that whether an advertisement in a foreign publication in circulation in New Zealand may qualify as use will depend on whether the advertisement is intended to solicit custom in New Zealand which in turn will depend on several factors including the nature of the magazine, the contents of the advertisement, the type of goods advertised and the location of the vendor: Melco, supra at p10 citing Malibu at [33] – [34]. 214 P Sumpter, Trade Marks in Practice (3rd ed), supra at p55. 215 Valley Girl v Hanama Collection (2005) 66 IPR 214 at [57] and “Yanx”, supra at 202. 216 P Sumpter, Trade Marks in Practice (3rd ed), supra at p55 - 56. TM No.s 1026083 & 1026084 Page 41 of 49
Is the sole purpose of Swatch’s applications to prevent or deter Apple from using ONE MORE THING?
118. Apple submits that the inescapable conclusion is that Swatch’s applications for registration were filed for the sole or primary purpose of preventing Apple from continuing to use its trade mark slogan “One more thing”.217 Apple claims that Swatch would have been aware of Apple’s use of the trade mark slogan “One more thing” in relation to its goods and services as at the relevant date.218 In particular it refers to:219
a. Apple’s use of the slogan as a feature of its product launches approximately 30 times between 1998 and 2014. Apple submits that its use of the “One more thing” trade mark slogan was widely published and uniquely identified with Apple’s goods and services.
b. The absence of evidence of use of ONE MORE THING by other traders in a trade mark manner or otherwise.
c. The timing of the filing of Swatch’s trade mark applications in Switzerland, and subsequent international registrations, which were filed around two months after the Apple event at which Tim Cook announced the Apple Watch. Apple asserts this timing indicates an “awareness of Tim Cook’s use of the “One more thing” slogan to introduce the Apple Watch device”.220
119. Further, Apple alleges that Swatch’s intention to disrupt and prevent Apple’s use of “One more thing” is supported by Swatch’s subsequent application to register TICK DIFFERENT.221 Apple is also opposing that application and alleges that TICK DIFFERENT is confusingly similar to Apple’s THINK DIFFERENT slogan.222
120. I have already found that Apple has not used “One more thing” as a trade mark for the relevant goods. Rather, it has been used by Steve Jobs, and to a lesser extent Tim Cook, as a presentation technique at Apple’s events. As such, I do
217 Written submissions, paragraph 68. 218 Written submissions, paragraph 63. 219 Written submissions, paragraphs 63 – 64. 220 There were approximately two months between Tim Cook announcing the Apple Watch device (in September 2014: La Perle, paragraph 20) and the priority dates for the opposed marks in Switzerland (November 2014). 221 Written submissions, paragraph 69. 222 Written submissions, paragraph 69 and information publically available on the Trade Marks Register. TM No.s 1026083 & 1026084 Page 42 of 49
not accept that Swatch’s applications (which do not cover conferences and presentation services) could be used to prevent Apple continuing to use the catchphrase “One more thing” for that particular purpose.
121. Swatch may well have been aware of Apple’s use of the catchphrase “One more thing”, when filing its applications, although the evidence before me does not clearly establish that either way. Regardless, even if Swatch had such an awareness at the relevant date, Swatch is entitled to make a judgment call as to whether the opposed marks are likely to deceive or confuse.223 If Swatch is wrong then there will be consequences in terms of registrability, but it does not follow that the application was filed in bad faith.224 Awareness of the kind Apple accuses Swatch of having is not sufficient, in itself, to amount to bad faith.225
122. I am not convinced that Swatch’s sole, or even primary purpose, in filing its applications was to prevent or deter Apple from using the “One more thing” slogan. At the hearing, counsel for Swatch emphasised that there is another explanation behind Swatch’s applications, being Ms Aebi’s explanation given on oath. Ultimately, I prefer the account given by Ms Aebi to the conjecture relied on in Apple’s submissions.
Finding
123. I consider that the serious bad faith allegations raised by Apple have not been distinctly proved. Swatch has discharged the onus of establishing, on the balance of probabilities, that its applications for registration of the opposed marks were not made in bad faith. Accordingly, registration is not prohibited by s 17(2) of the Act.
223 Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3 at [85]. See also Zespri Group Limited v ENZA Limited HC Wellington CIV 2008-485-1072, 18 September 2008 at [56] – [59]. 224 Ibid. 225 In Chocoladefabriken Lindt & Spruengli AG v Franz Hanswirth GmbH [2009] EUECJ C-529/07, a case referred to in Apple’s submissions, the Court of Justice of the European Communities states that “the fact that the applicant knows or must know that a third party has long been using, in at least one Member State, an identical or similar sign for an identical or similar product capable of being confused with the sign for which registration is sought is not sufficient, in itself, to permit the conclusion that the applicant was acting in bad faith” at [40] – [41]. Apple also refers to AJIT Weekly Trade Mark [2006] RPC 25 where the Appointed Person found that the applicant, as a result of his background, must have known the opposing party’s earlier mark would be “widely known” in the relevant territory, and that registration and use of the mark would result in confusion and deception. However, unlike the mark relied on in that case, Apple does not have a “One more thing” trade mark that is “widely known” in New Zealand. Further, I have already found that the opposed marks are not likely to deceive or confuse. Even if likely deception or confusion had been established, that does not necessarily mean that Swatch must have known of the likelihood of any such deception or confusion. TM No.s 1026083 & 1026084 Page 43 of 49
Section 25(1)(c) ground – prejudice to a well known mark
124. Section 25(1)(c) of the Act states that:
The Commissioner must not register a trade mark (Trade Mark A) in respect of any goods… if … it is, or an essential element of it is, identical or similar to, or a translation of, a trade mark that is well known in New Zealand (Trade Mark D), whether through advertising or otherwise, in respect of those goods or services or similar goods or services or any other goods or services if the use of Trade Mark A would be taken as indicating a connection in the course of trade between those goods or services and the owner of Trade Mark D, and would be likely to prejudice the interests of the owner.
125. The opponent has the initial onus of establishing that its mark was well known in New Zealand as at the relevant date. Section 25(1)(c) provides protection for well known trade marks regardless of whether they are registered or unregistered. However, it is clear from the plain wording of this section that the opponent needs
to rely on a “trade mark”.
126. For the purposes of this ground Apple relies on the “trade mark and slogan ONE MORE THING”.226 I have already found that Apple’s slogan “One more thing” is a
presentation tool or a catchphrase, not a trade mark.
127. Even if that finding is wrong, the level of awareness necessary to be well known in New Zealand requires substantially more than will be sufficient to establish the low threshold of awareness under s 17(1)(a) of the Act.227 I have already found that Apple has not established the requisite awareness under s 17(1)(a) for the same “One more thing” slogan relied on for this ground. Therefore, Apple has not reached the higher threshold of “well known” required by s 25(1)(c) of the Act, and accordingly this ground of opposition cannot be made out.
Finding
128. Apple’s grounds of opposition under s 25(1)(c) of the Act are unsuccessful in both proceedings.
226 Amended notices of opposition, paragraphs 15. 227 TomTom Communications Limited v Tomtom International BV [2015] NZHC 3333, per Woodhouse J at [117]. TM No.s 1026083 & 1026084 Page 44 of 49
Summary of findings and direction
129. I find that Apple has not succeeded with any of its grounds in either opposition proceeding. Accordingly, I direct that the International Trade Marks designating New Zealand no.s 1026083 and 1026084 be registered in New Zealand. This direction applies after the expiry of the appeal period, but only if there is no appeal against this decision.
Costs
130. Swatch submits that it is entitled to increased costs because it was put to additional time and expense in urgently responding to Apple’s removal of a ground of opposition under s 17(1)(b) of the Act.228
131. On 18 April 2017 (well after the parties had filed their pleadings and evidence but prior to submissions being filed), Apple filed two applications to amend its notices of opposition by removing the reference to trade mark infringement in its s 17(1)(b) grounds of opposition. Over a year earlier, Swatch had notified Apple, by way of its counter-statements dated 12 February 2016, that trade mark infringement is not a valid ground of opposition under s 17(1)(b) of the Act, citing Hayden Crowther v Apple Inc [2013] NZIPOTM 48 at [68].229 Swatch submits that this is particularly so when Apple has no trade mark registrations upon which to allege trade mark infringement.230
132. Apple submits that the inclusion of the trade mark infringement allegation was a minor error in the notices of opposition, and that it did not impact the evidence.231 Counsel for Apple observes that the error was dealt with before submissions were filed and she describes the amendments to the notices of opposition as clerical.
133. In So Systems Limited v Soluxury HMC [2016] NZIPOTM 13, the Assistant Commissioner considered an uplift of 50 per cent over scale costs was reasonable, but an extensive range of factors were relevant to the proposed award of increased costs.232 One of these factors was So Systems pleading
228 Written submissions, paragraph 86.1(c). 229 Counter-statements, paragraphs 7. 230 Written submissions, paragraph 23. 231 Oral submissions at the hearing. 232 The Assistant Commissioner proposed awarding increased costs as she was conscious that, because the matter was decided on the papers, the parties had not had an opportunity to comment on that proposal. TM No.s 1026083 & 1026084 Page 45 of 49
allegations that were entirely without merit and which could never have succeeded.233
134. I accept that Apple’s inclusion of trade mark infringement as a basis for the s 17(1)(b) ground of opposition was without merit, and that the applications to amend the notices of opposition should have been made earlier.234 I also acknowledge that Swatch was required to respond urgently to Apple’s late applications to amend its notices of opposition.235
135. There are, however, no steps in the IPONZ scale of costs for reviewing notices of opposition, let alone an amended notice of opposition, and Swatch elected not to file amended counter-statements. As far as I can tell, none of the evidence already filed by the parties became redundant as a result of the amendment, which is unsurprising given it essentially relates to a legal issue. Further, the amendment was made over a month before submissions were due to be filed and, therefore, it should not have resulted in unnecessary time and expense when preparing Swatch’s submissions.
136. Increased costs are intended to reflect the extra expenditure incurred by a party as a result of the other party’s undesirable behaviour.236 Swatch has been put to the extra expenditure associated with reviewing the amended notices of opposition, and brief correspondence with IPONZ regarding the amendments, including confirming that Swatch would not be filing amended counter- statements.237 However, the amendment was minor and did not add anything new to the case.238 I also consider the additional time required on Swatch’s part would have been minimal, and the same amount of time would have been
The Assistant Commissioner reserved costs and directed that the parties had an opportunity to file any further submissions in relation to costs, should they wish to do so: at [94]-[96]. 233 At [92], where the example given is the pleading that Soluxury was not an aggrieved person by virtue of s 66(2) to s 66(4) of the Act. Likewise, in Hays Plc v Randstad Holding N.V. [2015] NZIPOTM 3, the Assistant Commissioner observed that increased costs can and should be made to discourage the practice of pleading and pursuing unmeritorious grounds of opposition: at [94]. IPONZ’s costs guidelines also identify “unreasonable persistence in pursuing a certain ground that lacks merit” as an “undesirable behaviour” that is likely to result in a departure from scale. 234 Given notice of the issue was received by Apple at the time Swatch filed its counter-statements. 235 Written submissions, paragraph 86.1(c). This was carried out by way of correspondence with IPONZ dated 20 and 24 April 2017. 236 IPONZ Practice Guidelines: Costs awards – “Departure from the scale of costs/increased costs awards”. 237 There is no evidence before me as to how much time was involved in completing these relatively minor steps. 238 As stated by IPONZ in its letter of 20 April 2017 to the parties. TM No.s 1026083 & 1026084 Page 46 of 49
required if Apple had amended its notices of opposition shortly after receiving Swatch’s counter-statements pointing out the issue.
137. As a result, I award costs to Swatch AG (Swatch SA) (Swatch Ltd) in accordance with the scale, being the sum of $3,790, calculated as follows:
Step Amount (NZD)
Preparing and filing the counter-statement x 2 at $300 each 600
Receiving and perusing the opponent’s evidence239 400
Preparing and filing the applicant’s evidence240 800
Receiving and perusing opponent’s evidence in reply241 100
Preparation of case for hearing242 500
Attendance at hearing by counsel (approximately 3.5 hours) 540
Hearing fee 850
TOTAL: $3,790
Dated this 18th day of July 2017
______Natasha Alley Assistant Commissioner of Trade Marks
Baldwins Intellectual Property for the applicant
Henry Hughes for the opponent
239 The same evidence appears to have been filed by Apple in each proceeding. 240 The same evidence appears to have been filed by Swatch in each proceeding. 241 The same evidence in reply appears to have been filed by Apple in each proceeding. 242 One hearing was held covering both opposition proceedings.
TM No.s 1026083 & 1026084 Page 47 of 49
Schedule 1: Details of Swatch’s New Zealand Designations
Designation no. 1026083
International 1261460 Registration no.
Trade mark SWATCH ONE MORE THING
Trade mark type Word
Applicant Swatch AG (Swatch SA) (Swatch Ltd)
Classes 9 and 14 [Nice Classification Schedule 10]
Goods/services Class 9: Apparatus for recording, transmission and reproduction of sound or images; electronic payment processing apparatus, apparatus for processing cashless payment transactions; magnetic recording media, sound recording disks; compact disks, DVDs and other digital recording media; apparatus enabling the playing of compressed sound files (MP3); calculating machines and data processing equipment, software; game software for mobile telephones, for computers and for digital personal stereos; electronic game software for mobile telephones, for computers and for digital personal stereos; computers, portable computers, handheld computers, mobile computers, personal computers, wrist computers, electronic tablets and computerized and mobile devices, digital personal stereos, mobile telephones and new- generation mobile telephones featuring greater functionality (smartphones); telecommunication apparatus and instruments; apparatus for recording, transmission, reproduction of sound or images, particularly mobile telephones and new-generation mobile telephones incorporating greater functionality (smartphones); hand-held electronic apparatus for accessing the Internet and sending, receiving, recording and storing short messages, electronic messages, telephone calls, faxes, video conferences, images, sound, music, text and other digital data; handheld electronic apparatus for wireless receiving, storing and transmitting of data or messages; handheld electronic apparatus for monitoring and organizing personal information; handheld electronic apparatus for global positioning [GPS] and displaying maps and transport information; handheld electronic devices for detecting, monitoring, storing, surveillance and transmitting data relating to the user activity, namely position, itinerary, distance traveled, heart rate; covers for computers, portable and mobile telephones; optical apparatus and instruments, particularly spectacles, sunglasses, magnifying glasses; cases for spectacles, magnifying glasses and sunglasses; batteries and cells for computers and electronic and chronometric apparatus.
Class 14: Precious metals and their alloys and goods made of these materials or coated therewith included in this class, namely figurines, trophies; jewelry, namely rings, earrings, cufflinks, bracelets, charms, brooches, chains, necklaces, tie pins, tie clips, jewelry caskets, jewelry cases; precious stones, semi-precious stones; timepieces and chronometric instruments, namely chronometers, chronographs, clocks, watches, wristwatches, wall clocks, alarm clocks as well as parts and accessories for the aforesaid goods, namely hands, anchors, pendulums, barrels, watch cases, watch straps, watch dials, clockworks, watch chains, movements for timepieces, watch springs, watch glasses, presentation cases for timepieces, cases for timepieces.
Submission date 20 August 2015
TM No.s 1026083 & 1026084 Page 48 of 49
Filed/Designation date 22 May 2015
International 22 May 2015 Registration date
Statement of use The mark is being used or proposed to be used, by the applicant or with his/her consent, in relation to the goods/services
Designation no. 1026084
International 1261461 Registration no.
Trade mark ONE MORE THING
Trade mark type Word
Applicant Swatch AG (Swatch SA) (Swatch Ltd)
Classes 9 and 14 [Nice Classification Schedule 10]
Goods/services Class 9: Apparatus for recording, transmission and reproduction of sound or images; electronic payment processing apparatus, apparatus for processing cashless payment transactions; magnetic recording media, sound recording disks; compact disks, DVDs and other digital recording media; apparatus enabling the playing of compressed sound files (MP3); calculating machines and data processing equipment, software; game software for mobile telephones, for computers and for digital personal stereos; electronic game software for mobile telephones, for computers and for digital personal stereos; computers, portable computers, handheld computers, mobile computers, personal computers, wrist computers, electronic tablets and computerized and mobile devices, digital personal stereos, mobile telephones and new- generation mobile telephones featuring greater functionality (smartphones); telecommunication apparatus and instruments; apparatus for recording, transmission, reproduction of sound or images, particularly mobile telephones and new-generation mobile telephones incorporating greater functionality (smartphones); hand-held electronic apparatus for accessing the Internet and sending, receiving, recording and storing short messages, electronic messages, telephone calls, faxes, video conferences, images, sound, music, text and other digital data; handheld electronic apparatus for wireless receiving, storing and transmitting of data or messages; handheld electronic apparatus for monitoring and organizing personal information; handheld electronic apparatus for global positioning [GPS] and displaying maps and transport information; handheld electronic devices for detecting, monitoring, storing, surveillance and transmitting data relating to the user activity, namely position, itinerary, distance traveled, heart rate; covers for computers, portable and mobile telephones; optical apparatus and instruments, particularly spectacles, sunglasses, magnifying glasses; cases for spectacles, magnifying glasses and sunglasses; batteries and cells for computers and electronic and chronometric apparatus.
Class 14: Precious metals and their alloys and goods made of these materials or coated therewith included in this class, namely figurines, trophies; jewelry, namely rings, earrings, cufflinks, bracelets, charms, brooches, chains, necklaces, tie pins, tie clips, jewelry caskets, jewelry cases; precious stones, semi-precious stones; timepieces and chronometric instruments, namely chronometers, chronographs, clocks, watches, wristwatches, wall clocks, TM No.s 1026083 & 1026084 Page 49 of 49
alarm clocks as well as parts and accessories for the aforesaid goods, namely hands, anchors, pendulums, barrels, watch cases, watch straps, watch dials, clockworks, watch chains, movements for timepieces, watch springs, watch glasses, presentation cases for timepieces, cases for timepieces.
Submission date 20 August 2015
Filed/Designation date 22 May 2015
International 22 May 2015 Registration date
Statement of use The mark is being used or proposed to be used, by the applicant or with his/her consent, in relation to the goods/services
TM No.s 1026083 & 1026084