K-Swiss KO’ed in timely TM decision
The Federation of the Swiss Watch Industry has successfully opposed the registration of a trade mark which included the words “K-SWISS” for goods including watches in Federation of the Swiss Watch Industry FH v K-Swiss Inc [2009] ATMO 78.
The Federation argued that the application contravened section 43 of the Trade Marks Act 1995 (the Act) as the trade mark connoted that the Applicant’s time pieces were of Swiss origin and this would likely lead to deception and/or confusion.
The Hearing Officer noted that from her knowledge, Switzerland is promoted in Australia “as a land of chocolates, watches and banks”. She found that in the relevant mark, the letter K had no meaning and did not counteract the connotation of the word “Swiss” within the mark. The Hearing Officer also noted that a significant proportion of the buying public would be confused into thinking that, or at least be caused to wonder whether or not, K-Swiss’ goods were of Swiss origin. Accordingly, the section 43 ground of opposition was made out.
The Hearing Officer also concluded that the application contravened section 61 of the Act which relates to marks containing or consisting of a false geographical indication.
Notwithstanding these findings, the Hearing Officer was not satisfied that the Applicant’s use of the mark would be misleading or deceptive and therefore in breach of sections 52 and 53 of the Trade Practices Act 1974 which seems at odds with other parts of the decision.