In Swatch AG (Swatch SA) (Swatch Ltd.) v. Hudson Watch, Inc., the Federal Court of Canada (FC) allowed the appeal of Swatch AG (“Swatch”) from a decision of the Trade-marks Opposition Board (TMOB) refusing Swatch’s application, in part, to register the mark “iSWATCH” in design form for goods relating to watches and clocks due to a likelihood of confusion with Hudson Watch, Inc’s (“Hudson”) registration for “i watch” for men’s and ladies’ wristwatches.
The TMOB found “the balance of probabilities between finding that there is no reasonable likelihood of confusion, and finding that there is a reasonable likelihood of confusion, to be evenly balanced”. In allowing Hudson’s opposition, the TMOB held that Swatch did not discharge its legal onus of establishing that there was no reasonable likelihood of confusion. Swatch did not file any evidence before the TMOB to establish that the “iSWATCH” mark had acquired distinctiveness in Canada.
On appeal, Swatch filed evidence of sales and advertising of its “iSWATCH” mark and family of SWATCH trade-marks in Canada to support acquired distinctiveness of its “iSWATCH” mark. As the SWATCH mark was well known in Canada, the addition of the “i” did not alter its acquired, or inherent, distinctiveness. The FC found that Swatch’s “iSWATCH” mark had a certain inherent distinctiveness and a significant acquired distinctiveness, whereas, Hudson’s “i watch” mark lacked inherent distinctiveness. The FC held that Hudson could not assume the right to claim confusion over the word “watch” without demonstrating the inherent or acquired distinctiveness of its mark, and concluded that there was no reasonable likelihood of confusion between the two marks.
Summary By: Lauren Lodenquai
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