Legal responsibility Of Third-Celebration Builders In Trademark Infringement – Trademark – India

Just lately, SWATCH the Swiss model for luxurious and high-end watches
filed a swimsuit for trademark infringement towards SAMSUNG. The matter
was determined in favor of SWATCH. However an essential query arose
earlier than the court docket, which is, to what extent the app retailer homeowners or
builders might be held chargeable for the apps developed by third


BREGUET you title a high-end watch model and SWATCH will most
the proprietor of it. SWATCH which stands for Swiss Watches is a
well-known model having a number of logos, designs, patents, and

copyrights registered
in its title. In earlier years, the
firm has filed for a number of trademark and
patent infringement fits
towards manufacturers like Tiffany,
Bloomberg, Goal and so, and has emerged victorious in all. This
piece offers with SWATCH’s most up-to-date victory towards SAMSUNG
in a UK court docket.1


In 2018, SAMSUNG via its Galaxy platform, launched a watch
model beneath the title ‘GALAXY WATCH’. A function was added in
these watches the place the person might set up from the SAMSUNG app
retailer a lookalike of well-known watch manufacturers. After putting in that
into the cellphone the face of the watch would look precisely the identical as
that of the luxurious model.

A bolt out of the blue was felt by SWATCH after seeing Galaxy
Watches. Earlier than the model might begin making earnings out of it,
inside a span of a month a
trademark infringement
swimsuit was slapped on the model. SWATCH at
England and Wales Excessive Courtroom filed for infringement of trademark
stating that GALAXY WATCH is identically just like SWATCH watches.
It was claimed by SWATCH that greater than 30 such faces of the watch
had been ‘an identical or nearly an identical’ to that of
SWATCH’s infringing 23 logos belonging to the

SWATCH holds a dominant place available in the market for watches. The
firm began manufacturing in 1983 and has its turnover of value
$845 million as of FY 2021. Damages value $100 million had been claimed
by SWATCH. Aside from
trademark infringement
, unfair commerce practices and deceptive
clients on pretext of dishonest had been additionally alleged by SWATCH.


Greater than 30 watch face apps had been in query, under represented
are three such marks:


UK court docket needed to determine on following issues:

  1. Whether or not or not there may be trademark infringement of SWATCH by
  2. To what extent are the app retailer builders/homeowners liable
    relating to the apps developed by third events?

The dispute in hand was determined in favor of SWATCH!

Samsung the truth is was believed to be liable of trademark
infringement. Right here, the court docket very rightly identified on the purpose
of chance of confusion. The very occasion when Samsung
Smartwatches tailored a face to appear to be Swatch’s design,
floor was established relating to chance of confusion. The
replication in look of Swatch and subsidiary manufacturers was
doable solely after immediately downloading from Samsung App Retailer
“watch face” designs which had been commercialized and bought
within the Samsung App Retailer.

Common Ideas mentioned within the case-

  1. Probability of confusion

The precise which means of this time period has not been given beneath the
European Union Trademark Regulation (EUTMR) but it surely has been
substantiated many a instances by the Courts. Article 9 briefly
mentions the idea of ‘chance of confusion’ and
‘chance of affiliation’. Two circumstances have been
laid down to suit the idea of ‘chance of confusion’
into 4 partitions, they’re, firstly, the second when one product is
confused with another by the general public and secondly, is when public
makes out a join within the conflicting TM and thinks that the
providers are similar from that financially linked group.

  1. Infringement beneath Article 9(2) of EUTMR

Article 9(2) of EUTMR gives for sure rights of proprietors
in relation to items/providers. Underneath this if the mark in query
is an identical or just like that of the mark of different occasion which
may cause chance of affiliation or chance of confusion then
that may be prohibited by the proprietor of the mark. On this case, the
court docket held that there’s a direct infringement by Samsung
Smartwatches of Swatch designs. Swatch has a longtime
repute in luxurious watches enterprise globally, thus, to make use of its
designs even via some downloaded apps from third occasion
builders would represent infringement.

  1. Association with third occasion app builders

Samsung Galaxy App (SGA) retailer permits any third occasion to add
an app by acquiring an account after registering with Samsung’s
SGA Vendor Portal on offering fundamental particulars like title, deal with,
residential nation, checking account, cellphone quantity, fee particulars
and so on. The standards to obtain watch face apps was that one should
have a Samsung Smartwatch. Swatch had to purchase Samsung Smartwatch and
cellphone to verify the contents and stage of their apps and
infringement thereof.

Relating to income sharing with the app builders who uploads
their apps on SGA, 30% of income raised was going to Samsung (20%
in case the app developer was a “Galaxy Apps Associate”).
Samsung had the precise to grant licenses to consumers on SGA platform.
Whereas deciding the matter, the bench famous that regardless that the
apps had been developed by third events, it was Samsung’s sole
discretion to place them on SGA or not. Additionally, Samsung was making out
earnings from it, thus, can not shed its legal responsibility in respect of the
related marks as they appeared on the face of the watch.


Regardless of varied defenses given by Samsung, Swatch was profitable
in establishing infringement. Swatch not solely gained the
trademark infringement
case however has additionally helped in establishing
modern-day jurisprudence in relation to 3rd occasion app builders.
Bench determined that watch face apps are related items to
smartwatches, with this stage of similarity chance of confusion
might be established.


1 Montres Breguet SA & Ors v Samsung Electronics Co.
Ltd [2022] EWHC 1127 (Ch) (20 Might 2022)



Co-authored by Iit Kharagpur (Intern At Ok&Ok)

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