womens ralph lauren polo ABC Radio National Australian Broadcasting Corporation
Damien Carrick: Today we’re looking at life’s little luxuries: wristwatches, perfumes, alcohol and chocolates. They can hit both our hip pocket nerve and our waistline, so why do we actually go there?
Last year my favourite TV program was The Gruen Transfer. I loved the way the show would shine a light on what makes a product irresistible to consumers the words, logos, shapes and colours, that together make a shopper choose one brand over all the others.
In fact there’s quite a cluster of these disputes in both the alcohol and chocolate industries, where it seems trademarks are just as important as taste buds. And just a few days ago, a trademark dispute here in Australia involving a US based sportswear company and a Swiss industry association finally settled.
The association’s lawyer is Campbell Thompson, partner with law firm Freehills.
Campbell Thompson: Well we were acting for the Federation of Swiss Watch Manufacturers and they represent the interests of Swiss watchmakers worldwide. They seek to ensure that watches are marketed around the world as Swiss watches, only when they are in fact of Swiss origin. And they were involved in this case because a company called K Swiss had applied to register a trademark for K Swiss for watches, and that trademark did not have any limitation that prevented the mark from being used in relation to watches not of Swiss origin.
Damien Carrick: Now tell me, who is K Swiss?
Campbell Thompson: K Swiss actually is a manufacturer and tennis shoes and other sporting apparel.
Damien Carrick: So they had a registered trademark in various places, including Australia, in the sportswear category, but they were applying for a trademark in the watches category in Australia?
Campbell Thompson: That’s right. And so the Federation opposed the trademark on three grounds, but the primary ground was that because of the connotation of the mark, that its use would be likely to deceive or cause confusion amongst the public, and in particular that it would lead people to think that the watches were made in Switzerland.
Damien Carrick: What’s the difference between sports goods with a K Swiss brand or logo on it, and a watch with a K Swiss logo on it?
Campbell Thompson: Well that’s a good question. Obviously from my client’s perspective, they represent watchmakers, and so they don’t have a broader role to play in terms of the use of the Swiss designation, but also Switzerland is particularly well known for watches, and I think it’s fair to say it’s got a very long standing reputation and fame for watchmaking in particular.
Damien Carrick: I think last October there was a decision by the Registrar of the Office of Trademarks here in Australia;
this was a decision on whether or not K Swiss could get a trademark in this watches category. What was that decision?
Campbell Thompson: Well the office actually allowed the trademark registration, but subject to a condition that it only be used in relation to watches that were of Swiss origin, and in particular that complied with a 1971 Swiss ordinance which stipulates how a watch qualifies for the designation of Swiss origin.
Damien Carrick: So what was the reasoning of the Trademarks Office in handing down this decision?
Campbell Thompson: Well essentially the Trademarks Office found that the trademark K Swiss had as its dominant element the word ‘Swiss’ and that the presence of the letter ‘K’ at the front of the word and other elements of the mark which were essentially a simple shield device, didn’t in any way dispel the overall impression of the mark which was Swiss, and the decision maker held that in Australia indeed it’s very well known amongst the public that the use of the word ‘Swiss’ designation for watches signifies that the watches are of Swiss origin, and it’s very well known that Switzerland is a source of high quality watches and has been for many, many years.
Damien Carrick: So the trademark was likely to deceive or cause confusion, and I guess the actual logo or trademark included a sort of geographic indicator, something which really kind of branded the product as being Swiss.
Campbell Thompson: That’s right. K Swiss had argued that actually consumers would see its mark as being a brand, and it tried to rely also on the fact that it did indeed have a reputation in a different market, for its tennis shoes and its apparel, to indicate that therefore consumers wouldn’t be confused, but the decision maker, the office disagreed.
Damien Carrick: So that was last October. I understand that K Swiss appealed the decision, but just a few days ago it’s withdrawn the appeal papers and the matter is now settled? The dispute is settled.
Campbell Thompson: That’s right. The dispute is settled between the parties. The court still have to give effect to the orders, but the dispute is settled. The trademark itself has been withdrawn, or will be withdrawn, as part of the settlement.
Damien Carrick: Have K Swiss obtained similar sorts of trademarks in other jurisdictions, in the watches category?
Campbell Thompson: They have applied to protect K Swiss in the watches category in other jurisdictions, and there is in fact a global battle going on. Indeed in this part of the world, in New Zealand in June last year, the High Court rules in favour of the Federation in a similar dispute.
Damien Carrick: And had K Swiss been successful in any other major jurisdictions?
Campbell Thompson: Not to my knowledge. There’s been a dispute in the United States and in several other jurisdictions, but to date the Federation’s been successful.
Damien Carrick: Now moving away from this particular case, Campbell Thompson,
have there been similar sorts of disputes either here in Australia or in other jurisdictions?