Swatch clocks a victory over Apple in TM row over “one more thing”

Swatch have successfully overturned a trade mark decision which had prevented its registration of the trade marks “one more thing” and “swatch one more thing”.  Apple had opposed the registration of the marks on the basis that the phase was well known to have been used by Steve Jobs during product launches, most notably when Apple returned to profitability in 1998. More recently it was used by Tim Cook during the launch of the Apple Watch.

The phrase “one more thing” is thought to have been borrowed from Columbo, the famous US TV detective, who would often finish questioning a suspect and walk away, only to turn back and reveal a key piece of incriminating evidence.  Apple submitted evidence that its use of the phrase at various product launches was well known, iconic even, as well as exhibiting the views of industry commentators that had noticed the surprise move by Swatch to register the name.

Swatch and Apple have had some bad blood recently over the registration of various marks, which appears to have started when Apple released the Apple Watch (and become a direct competition to the Swatch Group). There have been disputes over “I-WATCH” and “I-SWATCH” trade marks and the “TICK DIFFERENT” trade mark which is thought to be a play on the famous Apple Think Different campaign.

In this case, Apple had been successful in its opposition on the basis that the registration by Swatch had been a parody made in bad faith. It was considered that there is a difference between a parody in and of itself and a parody used in commercial communications.  Registering trade marks consisting of parodies of rival’s marketing signs in order to obtain an exclusive right to use the phrase was not allowed.

Swatch successfully overturned this decision on appeal on the basis that just because the application was considered to be a parody, that did not mean that Swatch intended to upset Apple and it was not inherently dishonest practice.  It was noted that Swatch is likely to have considered the registered marks as useful in the ongoing wider dispute with Apple and perhaps Swatch will consider them to be a bargaining chip.

It will be interesting to see if Apple seeks to appeal this decision and take the matter further. Only time will tell.

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