Jonathan Abrams Comments in World IP Review

https://www.worldipreview.com/news/watch-out-swatch-sues-samsung-in-new-york-17568

Article From World Intellectual Property Review: Swatch sues Samsung in New York

Swiss company Swatch Group has accused Samsung Electronics and its American subsidiary of infringing its trademark on designs for downloadable smartwatch faces.

In the complaint, filed on Friday, February 22, in the US District Court for the Southern District of New York, the watchmaker alleged that the Korean telecommunications company’s smartwatches had infringed its IP.

Samsung markets a line of smartwatches for which users can download a range of watch faces. In the suit, Swatch cited multiple watch faces available for download which it says infringe trademarks for its own watch designs.

Samsung markets a line of smartwatches for which users can download a range of watch faces. In the suit, Swatch cited multiple watch faces available for download which it says infringe trademarks for its own watch designs.

The infringing watch faces mimic some of Swatch’s “most exclusive designs”, the complaint said. The allegedly infringing designs bear the logos of Swatch-owned brands including Tissot and Hamilton.

Swatch said that consumers would likely conclude that Samsung had “taken care” to ensure that the designs “do not infringe the intellectual property rights of third parties”.

The watchmaker said it had provided no licence or consent for Samsung to use its trademarks.

Swatch contacted Samsung’s Swiss subsidiary in December 2018 and requested that the infringing designs be removed from the Samsung Galaxy App store.

According to the suit, Samsung deleted “some, but not all” of the watch faces from the app store, but did not accept that any infringement had occurred.

Samsung “failed to provide any assurances that it would discontinue validating and distributing infringing watch faces in the future”, the complaint said.

Jonathan Abrams, partner at Gregory Abrams Davidson Solicitors in London, said he thought it would be “difficult for Samsung to legitimately defend” either distributing or permitting third parties to distribute products which infringed Swatch’s IP.

Speaking to WIPR, Abrams said that the “involvement of third-party developers is largely irrelevant as Samsung owns the distribution channel” and is liable for infringing content offered on its platform.

If both parties wanted to avoid a jury trial, the most likely result would be “a settlement to include an award of damages against Samsung”, Abrams added.

In a statement sent to WIPR, Swatch said that Samsung had “blatantly and willingly infringed” its IP and acted “without regard” for its rights.

“The affected brands are worth billions”, the statement added.

Swatch is seeking injunctive relief preventing any infringement of its IP, as well as damages for wilful infringement of its trademarks.

WIPR has contacted Swatch and Samsung for comment.