Bloomberg BNA’s Patent Trademark & Copyright Journal® is the IP industry’s premier news service, offering customizable, objective, timely, and reliable news coverage and commentary from leading...
March 23—The Russian IP office has ruled in favor of Apple Inc. and its application to register the iWatch trademark, in a March 23 decision.
The Chamber of Patent Disputes of the Russian Federal Service for Intellectual Property (Rospatent) annulled an earlier decision to deny registration of the iWatch trademark.
On Jun. 3, 2013, Apple filed an application to register the iWatch trademark, but on Apr. 27, 2015 the agency denied the application, citing similarity between iWatch and trademarks already registered in Russia by Swatch AG.
On Aug. 25, 2015, Apple raised objections against Rospatent's decision, arguing that iWatch was one of several well-known products and trademarks such as iPhone, iPad, iPod and iMac.
Meanwhile, on Dec. 30, 2015, Swatch AG sent a letter to Rospatent, insisting that registration of iWatch trademark could entail a significant likelihood of confusion between this mark and the company's registered trademarks in Russia, including iSwatch.
Nonetheless, Rospatent's Chamber of Patent Disputes determined that despite certain similarities between Apple's and Swatch's marks, there was no likelihood of confusion.
Therefore, the Chamber accepted Apple's arguments and determined that Rospatent's decision to deny registration of the iWatch trademark was at variance with Section 6, Article 1483 of the Russian Civil Code. The Chamber annulled the earlier rejection and approved Apple's registration of the iWatch trademark in Russia.
Apple's Russian website refers to its wearable device as the Apple Watch, the same name the company uses in most other countries. Apple may have intended to name its device the iWatch, but other companies already held registrations for that mark in various countries. For example, another company holds a U.S. registration for iWatch with a priority date going back to August 2012, almost three years before Apple released its product. Similarly, an Irish company owns a European Community trademark registration for iWatch going back to 2008. Both the U.S. and EU iWatch registrations are in class 9 covering mobile phones, portable devices and other related goods.
Interestingly, Swatch has initiated cancellation proceedings against the EU iWatch registration.
To contact the reporter on this story: Sergei Blagov in Moscow at email@example.com
To contact the editor responsible for this story: Mike Wilczek in Washington at firstname.lastname@example.org
Text in Russian available at http://src.bna.com/dx7
All Bloomberg BNA treatises are available on standing order, which ensures you will always receive the most current edition of the book or supplement of the title you have ordered from Bloomberg BNA’s book division. As soon as a new supplement or edition is published (usually annually) for a title you’ve previously purchased and requested to be placed on standing order, we’ll ship it to you to review for 30 days without any obligation. During this period, you can either (a) honor the invoice and receive a 5% discount (in addition to any other discounts you may qualify for) off the then-current price of the update, plus shipping and handling or (b) return the book(s), in which case, your invoice will be cancelled upon receipt of the book(s). Call us for a prepaid UPS label for your return. It’s as simple and easy as that. Most importantly, standing orders mean you will never have to worry about the timeliness of the information you’re relying on. And, you may discontinue standing orders at any time by contacting us at 1.800.960.1220 or by sending an email to email@example.com.
Put me on standing order at a 5% discount off list price of all future updates, in addition to any other discounts I may quality for. (Returnable within 30 days.)
Notify me when updates are available (No standing order will be created).
This Bloomberg BNA report is available on standing order, which ensures you will all receive the latest edition. This report is updated annually and we will send you the latest edition once it has been published. By signing up for standing order you will never have to worry about the timeliness of the information you need. And, you may discontinue standing orders at any time by contacting us at 1.800.372.1033, option 5, or by sending us an email to firstname.lastname@example.org.
Put me on standing order
Notify me when new releases are available (no standing order will be created)