The Ice Watch business; ‘Time’ for an overview of recent interesting caselaw.

Geschreven door Carrie Boergonje – i-ee. Advocatenkantoor Uitgeest
Artikel gepubliceerd op 3 april 2015 op de website van Watch Branding gevestigd te Uitgeest

The Ice Watch business is booming. Since 2006, when the company started and released the –in the mean time- famous watches, a lot of infamous lawsuits have followed.

The so called ‘Ice watches’ became famous all over the world when viral marketing strategies were used, and famous people like Katy Perry and the Black Eyed Peas wore the watches in public.
The watches come in various colours. Originally, they were sold in coloured boxes in the shape of a Lego block.

Lego vs. Ice Watch
The Lego shaped boxes were the subject of conflict between Ice Watch and Lego in 2011. Lego argued that the boxes which were used to pack the Ice Watches were an infringement on their shape mark because they were too much alike Lego blocks. In the first case, the court decided that by using the lego shaped boxes, Ice Watch had created unfair competition with the brand popularity of Lego. It is prohibited to create these kinds of unfair competition by creating products which are looking alike products of another company, regardless if there are registered trade marks, model rights or even patents.

In appeal, the court decided that there was an infringement on the trademark rights of Lego, because the shape of the boxes Ice Watch had used, looked almost similar to the Lego blocks which were protected with a shape mark by Lego. The public would easily conclude or assume that the Ice Watches were sold by a company which was related to Lego. That is undesirable.Ice Watch had to change the package of the watches.

Ice Watch vs. others
After this affair, Ice Watch had to do with a lot of imitation Ice Watches which were brought on the market. The company of course maintains its intellectual property rights very precise; if Ice Watch would not deal with others who infringe the intellectual property rights of Ice Watch, it is in example very likely that the company suffers financial damages. Consumers can incorrectly think that they buy an original Ice Watch and instead have a cheap imitation around their wrists. This will damage the reputation of Ice Watch as a brand. On the other side, people who buy fake Ice Watches will probably not buy a (more expensive) real Ice Watch, which can result in potential financial losses for the Ice Watch company. That is undesirable.

Throughout the years, Ice Watch has charged several persons and companies who have sold or imported watches which were very similar to the original Ice Watches. With variable results by the way. In 2012 Ice Watch successfully sued a Dutch company which imported fake Ice Watches.1 The Dutch court concluded that the imported watches infringed the intellectual property rights under which the trade mark rights of Ice Watch. The fact that the shape, the colour and the used material were very similar to the original Ice Watches was enough to condemn the company so it had to withdraw the watches from the market.

Criminal procedures
In 2013 in a criminal procedure, a Dutch merchant was convicted to 200 hours community service, a suspended sentence of two weeks with a probation period of two years and the obligation to pay for intangible damages and the legal fees of Ice Watch2. All of this because the merchant had several fake Ice Watches in his possession which he had sold, or wanted to sell to third parties. Based on the trade mark rights of Ice Watch, the company was able to claim their damages in the criminal procedure.
It is illegal to import, or sell fake products. The Dutch customs office is the aggravated organization which examines goods which are im- or exported in the Netherlands. It is possible for a trade mark owner to join a criminal procedure and claim the damages they have suffered due to the behavior of persons or companies that buy or sell fake products.
In 2015 several criminal procedures have already taken place, and merchants are convicted for the import of fake Ice Watches from China. In the Dutch criminal law system it is also possible to disposess criminal funds. This means that the companies have to hand over the alleged profits they have gained from the sale of fake watches.

Ice Watch vs. Aldi
In 2015, Ice Watch summoned the German supermarket chain Aldi because Aldi had brought watches on the market which were very likely to the ‘Ice Glam’ model Ice Watch sells. The ‘Ice Glam’ model was very successful, until Aldi came with a much cheaper, similar watch. Previous negotiations between both companies had not lead to any result.

During the procedure, Aldi had proposed to stop selling the watches and to pay a reimbursement of €100.000, but Ice Watch did not agree with this proposal.
That is a bit sour for Ice Watch now, because the German court decided that the watches from Aldi weren’t an infringement on the intellectual property rights of Ice Watch.
Surprisingly, the German court even decided that the ‘Ice Glam’ model from Ice Watch was a possible infringement on the model rights of another company, which introduced the watches a year before Ice Watch did. The claim of Ice Watch was rejected by the court.

It is very wise to register your intellectual property rights so you have the possibility to tackle people or companies who infringe on your intellectual property rights. This can prevent financial damages for your company as mentioned above. It is also possible to claim financial losses and other costs related to the infringement on your intellectual property rights.

Rechtbank Oost-Brabant, IEPT20130402.Rechtbank Zwolle Lelystad, 13 september 2012, LJN BX 7995 (TKS – Petiet).

Even if you are a small company with a apparently very good idea, such as introducing a private label watch or a custom made watch in a specific design, it is wise to register the intellectual property rights, such as model rights, trade marks, etc. When a company like, for instance, Ice Watch introduces a similar designed watch a year later, you have the possibility to come up for your rights by showing them your model registration. It can come in hand as you have read above.

By: C. Boergonje, paralegal at i-ee, law firm specialized in intellectual property law.