As reported by the Washington Post, Apple Inc. has been challenged over the design of a clock “app” for iPad. The clock “app” was added to iOS 6, a new version of the software that runs Apple’s iPads. Swiss Federal Railway (“SBB”) claims that Apple has utilized its distinctive clock design that appears in train stations throughout Switzerland. The design at issue is an analog-style clock face, utilizing black dashes in place of numbers and a red second hand with a circle at one end. SBB claims that the clock design, created in 1944, is protected by both trademark and copyright and has become an icon of both SBB and Switzerland, having been included among examples of outstanding 20th century design at, among other places, the Museum of Modern Art in New York. Since 1986, Mondaine Group, a Swiss watch manufacturer, has held a license to make clocks and wristwatches based on the design.
SBB has stated that it is “proud that [its] icon of watch design is being used by a globally active and successful business,” and that “[the] money isn’t in the front of our interests because we are proud that Apple took an SBB design. If we have a cooperation agreement between two good brands, that’s a win-win.” The translation: “Pay us if you want to continue to use our clock design!”
Assuming that SBB truly owns the rights it has alleged, it would likely have a claim for copyright infringement. The standard for copyright infringement is substantial similarity. A cursory review of the design of the two clocks at issue reveals that they are nearly identical. Another issue for consideration would be whether the design of an analog clock face has sufficient originality to be protected by copyright. Here, it appears that the SBB design contains a modicum of distinctive design elements that would render it protectable (e.g., distinctive rectangular dashes, red second hand with a circle at one end, etc.)
SBB may also have a trademark claim. It is clear that a product design can be protected as a trademark if it functions as an indicator of source or origin. For example, the design of Coca-Cola’s distinctive glass bottle has long been protected as a trademark. Apple itself routinely takes steps to register its product designs as trademarks, including the designs for iPhone and iPod. Therefore, if consumers truly associate the clock design with SBB, as alleged, SBB may indeed have enforceable trademark rights.
The standard for trademark infringement is likelihood of consumer confusion. It is questionable, however, whether consumers would truly be confused over the source of a clock “app” found on a product known to emanate from Apple. SBB may alternatively claim that Apple’s design dilutes the distinctive nature of its trademark, in which case it would need to prove that its mark is famous.
It will be interesting to see how this plays out. SBB has not yet filed a legal action, instead requesting to meet with Apple during the next few weeks to discuss a business resolution. SBB and its licensee, no doubt salivating over the opportunity to cash in on the sale of millions of Apple devices, would most likely jump at the chance to license the clock design to Apple in exchange for a royalty on each product sold. While the most likely outcome of this dispute is a license, Apple could alternatively seek a reasonable phase out period to transition to a different clock design, or could play “hard ball” and force SBB to bring its claims in court.
