The General Court considers that it is time to limit the scope of protection of the SWATCH watch brand

The General Court ruled 72 years ago
hours a sentence (Case T-71/14) by which confirms the granting of the trademark
SWATCHBALL, deposited by the company PANAVISION EUROPE, for products and
services of a company dedicated to manufacturing and marketing
of photographic and cinematographic equipment (classes 9, 35, 41 and 42). The
peculiarity of the request is that it expressly excluded products and
services related to time control or timing.

SWATCH AG, the renowned Swiss company of
watches, filed opposition when he understood that the new brand was incompatible with
its SWATCH priority trademark registrations, as well as an attempt to take advantage
of the reputation of others. It was also claimed that the SWATCHBALL brand caused a
damage to the distinctive character and reputation of the priority brand.

The Court recognizes that there is a
similarity between the confronted marks, as well as the well-known nature and
reputation of SWATCH brands. However, considers that for the
prohibition of registration of art. 8.5 of the Regulation 207 / 2009 operate is necessary
that the relevant public understands that there is a connection between the two brands,
in such a way that without the concurrence of that link there can be no
improper use or damage to reputation or distinctive character
of the priority brand.

Although the Court appreciates that there are
factors that would reveal the concurrence of that link (similarity of brands and
reputation of the SWATCH brand), considers that its existence is diluted when it is
examines the different nature of brands' products and services
controversial (especially if the limitation made by
PANAVISION); when repaired in the different distribution channels and
market segments; when it is noted that the products do not enter into
competition and are not interchangeable; but, above all, when the
existence of two relevant differentiated publics: the general public in the
case of SWATCH watches and a much more specialized public in the case of
PANAVISION products and services.

Furthermore, the Court itself consider that still
when the specialized public of PANAVISION products is likely to know
also SWATCH brand products, it is not foreseeable that it will establish
a link between each other, between the SWATCHBALL and SWATCH brands.

This ruling shows us that even
The most reputable brands have to make an effort when it comes to accrediting the
existence of the link requirement, necessary for the prohibition to operate
of art. 8.5, so that the well-known and reputed brand deploys all its
effects.