In the Intellectual Property Office of New Zealand
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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.