INTA Bulletin

July 1, 2018 Vol. 73 No. 11 Back to Bulletin Main Page

CHILE: A 'Different' Setback for Apple

A longstanding battle between Swatch AG and Apple Inc. has now come to an end in Chile. On March 6, 2018, the Chilean National Institute of Industrial Property (INAPI) granted a registration for Swatch’s Chilean trademark TICK DIFFERENT in International Class 14. The registration was granted after INAPI rejected Apple Inc.’s opposition to TICK DIFFERENT based on Apple’s worldwide trademark and Chilean application for THINK DIFFERENT. 1181074: Swatch Ag (Swatch S.A.) (Swatch Ltd)-Apple Inc., Jan. 23, 2018.

INAPI granted the registration to the Swiss watchmaker and rejected Apple’s opposition on the following grounds:
  1. Although Apple’s THINK DIFFERENT trademark is registered around the world, the registered Classes (9, 16, 25, 35, 38, 41, and 42) are not related to Class 14;
  2. the fame or renown of the trademark in Chile for products in Class 14 was not proven;
  3. there was no previous use in Chile of THINK DIFFERENT as a trademark (associated with a product rather than an advertisement campaign) before Swatch’s application for TICK DIFFERENT; 
  4. there was no evidence of unfair competition or an act of bad faith by Swatch related with its application; and
  5. finally, it was confirmed that the Swatch application was filed with a Swiss priority date that was earlier than Apple’s Chilean application.
In a separate proceeding, Apple applied to register its THINK DIFFERENT mark in Nice Classes 9, 14, 28, 35, 36, 38, 41, and 42. 1192824: Apple Inc-Swatch AG (Swatch S.A) (Swatch Ltd), Apr. 5, 2018. This application was partially rejected for Class 14 on April 5, 2018, based on Swatch’s opposition citing its registered TICK DIFFERENT trademark. The proceeding is still pending before INAPI due to a formal error in the final resolution, but is likely to be finalized this year.

Although every effort has been made to verify the accuracy of items in the INTA Bulletin, readers are urged to check independently on matters of specific concern or interest. Law & Practice updates are published without comment from INTA except where it has taken an official position.

© 2018 International Trademark Association