In Montres Breguet SA and others v Samsung Electronics Co Ltd and another [2022] EWHC 1127 (Ch), the High Court ruled that the electronics group Samsung had infringed several registered trade marks owned by watchmakers where consumers had downloaded digital watch face apps, created by third-party web developers, from the group’s online app store to its smartwatches.
The case was started by a number of watch makers, including Breguet, Blancpain, Longines, Tissot, Hamilton and Swatch amongst others.
The claimants were all members of the Swatch group of watchmakers. Between them they owned 23 word and figurative trade marks registered for various goods including watches, smartwatches, computers worn on the wrist, electronic apparatus incorporating a time display and smartphones in the shape of a watch.
They sued the defendant electronics group Samsung in the High Court for infringement of the marks where consumers had allegedly downloaded 30 digital watch face apps bearing the marks to the defendant’s smartwatches around 160,000 times in the UK and the EU from the defendant’s online app store.
One of the infringing watch faces similar to Omega’s trademark
Although each of the apps had been created by third-party app developers, the claimants alleged that the defendant was intimately involved in, and controlled, the whole process by which the apps had been made available.
The High Court partially upheld the claim. It held:
- The claimants had established infringement of its marks under Article 9(2)(a) or (b) of the EU Trade Mark Regulation (2017/1001(EU)) (EUTM Regulation) in respect of certain of the watch face apps. The finding of infringement related to the relevant sign either on the downloaded watch face only, the name of the app only, or both.
- Use of the marks in app names (or in previews of the watch face) was not use in relation to smartwatches. Therefore, findings of double identity infringement under Article 9(2)(a) were limited to the use of the signs on watch faces produced by the apps, which constituted use in relation to smartwatches (or “computers worn on the wrist”, “electronic apparatus incorporating a time display” or “smartphones in the shape of a watch”).
- The apps were similar goods to smartwatches and had some level of similarity with watches, so that there was infringement under Article 9(2)(b) where the other requirements under that provision were met, including likelihood of confusion.
- The claimants had also established infringement by dilution under Article 9(2)(c) for some of the apps, in respect of the relevant sign as it appeared on the face of the watch.
- The defendant did not have a defence to the infringements under Article 14 of the E-Commerce Directive (2000/31/EC).
Lesson for your business? Don’t copy things unless you have a licence to do so. If you operate a platform of any kind that allows third-parties to sell goods services or downloads, then you will be responsible for what is being sold – so check.
Source: Practical Law