Trademark infringement in Switzerland: Omega is not Mega for watches

Franck Muller is a Swiss watch manufacturer which slogan is “Master of Complications”. On January 14, 2011, the Bern Commercial Court denied a request of trademark infringement against Franck Muller.

At a watch show in March 2009, Franck Muller presented new models, with a “MEGA” inscription in the center of the watch. Another watch manufacturer, Omega AG, owner of the famous “OMEGA” trademark, considered that the use of a “MEGA” sign for watches was an infringement of its trademark.

In July 2009, Omega filed an action in order to prevent Franck Muller from using the sign in dispute.

According to the Swiss Trademark Act, a sign can only be eligible for registration if it has a distinctive character. It means that the sign has to be sufficiently different from signs commonly used to describe the product. For example, the word “clock” is not distinctive enough for a watch, because it describes the product. Therefore, it cannot be eligible as a trademark.

In the Omega case, the Court decided that the “MEGA” word belonged to the public domain and dismissed Omega’s action. Indeed, Judges considered that the word “MEGA”, a descriptive term from the Greek alphabet which means “super”, “top” or “big”, can only be used to describe the watch, and therefore, cannot be a valid trademark for those goods. Besides, they noticed that the word “MEGA”, in this case, was used to describe a special quality of the watches, precisely a very complex type of clockwork.

Consequently, the use of the sign “MEGA” for watches did not constitute an infringement of the OMEGA trademark.

The Court could have stopped its reasoning at this point, but Judges also examined the plaintiff arguments about the likelihood of confusion.

The likelihood of confusion is required to prove a trademark infringement. It is characterized when a relevant consuming, watch buyers in this case, is likely to be confused or mistaken about the source of the product.

To establish the likelihood of confusion, signs, but also goods or services, have to be compared. The more they are similar, the more the likelihood of confusion will be established.

In the present case, Judges considered that “OMEGA” had to be compared to “MEGA” and “FRANCK MULLER” or “MEGA” and “FRANCK MULLER GENEVA”. Indeed, “MEGA” was not the only inscription on the watch. “FRANCK MULLER” and “GENEVA” were also present. Therefore, the Court found that there was no likelihood of confusion.

In fact, the only likelihood of confusion may have been found in the “MEGA” syllable, but this word belongs to the public domain.

Another condition for the likelihood of confusion to be characterized is the similarity of goods or services aimed by the signs.

Judges decided that goods, watches for both parties, weren’t similar at all. Indeed, they explained, in support of theirs decision that the price of watches were far apart (more than 5 times of difference) from each other. They also noticed that the technology used, the distribution channels and the clientele were different to reject a likelihood of confusion.

This Swiss decision is particular hard on Omega AG. Judges have been very strict on the goods comparison. It is not established that an average consumer would make any difference between those two watches brands, even if one is much more expensive than the other!

Decision: Bern Commercial Court, January 14, 2011, Omega AG v. Franck Muller.