US company K-Swiss has been legally prevented from registering its business name to sell its timepieces in Australia. The federation of the Swiss Watch Industry – the organisation that protects Swiss watchmakers and describes itself as the “Swiss watch industry’s leading trade association”, stopped K-Swiss registering its name in relation to watches, taking the case to the Australian Trademarks Office, according to a report in the Australian Financial Review.
Amid concerns that the name “K-Swiss” would lead consumers to believe the watches originated in Switzerland, the Australian Trademarks Office ruled that K-Swiss could not sell watches in Australia under this name, citing Swiss laws relating to watches displaying the word “Swiss”.
According to the K-Swiss website, the brand derives its name from founders Art and Ernie Brunner, Swiss-born brothers who became keen tennis players after moving to Southern California. Their first product was a leather tennis shoe, and their range eventually extended to shoes for a range of sports. K-Swiss watches are the latest product offering – a range targeting the youth market, and also offering a specific children’s line.
The company argued that the “K” preceding the “Swiss” removed any connotation that the brand was indeed made in Switzerland.
But the Trademarks Office did not agree, instead aligning itself with the federation, “The word Swiss is the element of the mark that immediately strikes the eye and the element of the mark that is likely to be taken away and remembered,” hearing officer Frances Aarnio told the AFR. “Australian consumers would, I think, be aware of Switzerland’s reputation as a producer of timepieces either through travel, study or common knowledge. In the context of the claimed goods I am satisfied the word Swiss is likely to connote Swiss origin.”
Aarnio believed many consumers would be confused into thinking, or at least wondering whether the watch supplier’s goods were of Swiss origin.
K-Swiss was also rejected in a New Zealand’s High Court last year on an appeal against a similar ruling.
When Jeweller tried to call the K-Swiss Australian office for comment, the number listed on its website was invalid. There was no listing or record for the company in White Pages or Directory Assistance, either.
Having to resort to contacting a K-Swiss stockist to obtain the correct number, Jeweller was informed by the K-Swiss staff member that she was aware the contact details on website were incorrect: “It’s been wrong for over six months. We can’t change it (on the website) because we don’t have the password,” she explained.
Jeweller then asked to speak with the general manager to obtain comment on the trademarks issue, but he said he “wasn’t at liberty to comment”, and the matter was being handled from the US head office.
When asked whom we should contact to obtain comment in the US, the general manager, who refused to be named in this story, said he did not know.