Apple Inc. v Swatch AG (Swatch SA) and Swatch Ltd

JudgePhillips JA,F Williams JA,P Williams JA
Judgment Date11 October 2019
Neutral CitationJM 2019 CA 81
CourtCourt of Appeal (Jamaica)
Date11 October 2019

[2019] JMCA Civ 29



THE HON Miss Justice Phillips JA

THE HON Mr Justice F williams JA

THE HON Miss Justice P Williams JA


Apple Inc
Swatch AG (Swatch SA)

Swatch Ltd Written submissions filed by Livingston Alexander & Levy for the appellant

Written submissions filed by Hart Muirhead Fatta for the respondent

Civil practice and procedure - Appeal — Whether Notice of Appeal appealing decision of Registrar of Industrial Property was properly filed — Failure to give reasons — Procedure for appeal to the court.


(Considered on paper pursuant to rule 2.4(3) of the Court of Appeal Rules 2002)

Phillips JA

I have read in draft the judgment of my brother F Williams JA. I agree with his reasoning and conclusion and have nothing further to add.

F Williams JA

By notice of appeal filed on 5 December 2018, the appellant, Apple Inc (“Apple”) challenges the decision of Batts J (“the learned judge”). By that decision, made on 27 November 2018, the learned judge ordered that a document entitled “Notice of Appeal”, appealing against a decision of the Registrar of Industrial Property under the Trade Marks Act, stand as filed. The learned judge also ordered that the appeal continue as if commenced by a fixed date claim form, set a timetable for the filing of a record of appeal, affidavits and submissions; and set a date for the appeal to be heard.


At the hearing at which the orders were made, the learned judge had before him a notice of a point in limine, filed by the attorneys-at-law for Apple. That notice sought to impugn the validity of the document purporting to initiate the appeal, filed by the respondent Swatch AG (Swatch SA) Swatch Ltd (“Swatch”). The main basis of Apple's challenge was this: that the document filed by Swatch in an effort to appeal the decision of the Registrar of Industrial Property (“the Registrar”), was the wrong document, filed pursuant to the wrong section of the Civil Procedure Rules, 2002 (“the CPR”), and so a nullity. Rule 60 of the CPR requires such an appeal to be commenced by fixed date claim form, to which must be annexed the grounds of appeal and affidavit in support. Instead, Swatch filed a document entitled “Notice of Appeal” pursuant to rule 62 of the CPR. The appeal, it was argued, was therefore void ab initio and incapable of being cured by the orders made by the learned judge.


At the hearing, the learned judge also considered Swatch's notice of application seeking orders that either: (a) the notice of appeal erroneously filed under rule 62 be allowed to stand and the appeal be treated as if properly commenced by fixed date claim form; or (b) that it be allowed until 30 November 2018 to file the required fixed date claim form.


It may be convenient to note at this point as well that Swatch's notice of appeal that was filed on 5 September 2018, was not served until 8 November 2018, and therefore was not served within the 28 days stipulated by rule 60 of the CPR. This is another basis of Apple's challenge to the learned judge's decision.


It may also be convenient to set out briefly at this juncture the background to the matter considered by the Registrar and from which this appeal has ultimately arisen. It began with Apple having been allowed to register the trade marks “iWATCH” (Registration # 61,585) and “IWATCH” (Registration # 61,586) in classes 9 and 14 of the Trade Marks Rules, 2001, as required by rule 7.

These classes are as follows:

Class 9

“Scientific, nautical, surveying, electric, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), lifesaving and teaching apparatus and instruments; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin-operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire-extinguishing apparatus.”

Class 14:

“Precious metals and their alloys and goods in precious metals or coated therewith, not included in other Classes; jewellery, precious stones; horological and chronometric instruments.”


Swatch applied to the Registrar to invalidate those trade marks on the following bases: (i) that those trade marks are similar to Swatch's trade marks that were registered earlier; and, that, being similar or identical to Swatch's trade marks, a real likelihood of confusion between the two sets of goods existed; additionally or alternatively (ii) that, although the goods might not be identical or similar, Apple's use of the challenged trade marks would result in Apple taking unfair advantage of, or would be detrimental to the distinctive character of, Swatch's reputation.


The Registrar refused Swatch's applications to invalidate those trade marks of Apple: hence Swatch's attempt to appeal that decision.

The grounds of Apple's appeal

The following summary (contained in Apple's written submissions filed 19 December 2018) reflects the substance of the grounds of Apple's appeal against the learned judge's decision:

Ground a

“As a matter of law, the decision of the learned judge is unjust by reason of a serious procedural irregularity in that he failed to give reasons for his decision to make the Order that he did. The learned judge should have given reasons for his decision.”

Grounds b, c and d

“The notice of appeal filed by Swatch was a nullity which could not be remedied.”

Grounds e, f and g

“[The] learned judge failed to exercise his discretion judicially.”


Ground a originally arose as the learned judge did not initially give written reasons for his decision. The written reasons were provided to us by Apple (for which we are grateful) by letter dated 10 June 2019, after this judgment had been drafted. I have therefore considered the two positions: (i) the non-giving of written reasons (as the relevant ground of appeal has not been expressly withdrawn, although circumstances have now changed); and (ii) the written reasons given. I, however, consider the written reasons now provided to be adequate in indicating the learned judge's thought process in ruling as he did.

Ground a- whether the learned judge failed to give reasons
Summary of submissions
For Apple

On behalf of Apple, it was at first contended that the learned judge failed to give reasons for his decision. This failure, it was submitted, by itself constitutes a sufficient basis for the appeal to be allowed. Paragraphs 23 and 24 of Apple's written submissions set out the pith and substance of Apple's contention on this issue:

  • “23. This Court ought to set aside his decision on this basis as no reasons for the decision can be deduced from the learned judge's utterances. [T]he decision of the learned judge was unjust by reason of a serious procedural irregularity in that he failed to give reasons for his decision to make the Order.

  • 24. This court would be well within proper judicial bounds to allow the appeal without an investigation into how the learned judge exercised his discretion because:

    • (a) It is not possible to ascertain how he did so; and

    • (b) The court cannot be satisfied that the learned judge gave himself the opportunity to do so.”


However, it may also be useful to set out paragraph 25 of the said submissions, which considered the alternative possibility that the learned judge's reasons might be possible to be ascertained from what he said:

“25. Insofar as the learned judge's reasons can be ascertained from the Notes of Hearing, the decision of the learned judge was wrong as a matter of law because:

  • (a) The learned judge misunderstood the law;

  • (b) In the exercise of his discretion he failed to take into account relevant facts sufficiently or at all; and or

  • (c) In the exercise of his discretion he took into account matters that were not relevant.”


In support of its submissions on this issue, Apple cited a number of cases, some of which, along with the main principles for which they were cited, are set out below.


Apple, for example, cited the case of Flannery and another v Halifax Estate Agencies Limited (Trading as Colley's Professional Services) [2001] 1 WLR 377 and, in particular, the dicta of Henry LJ at pages 381–382, some of which are set out hereunder:

“We make the following general comments on the duty to give reasons.

  • (1) The duty is a function of due process, and therefore of justice. Its rationale has two principal aspects. The first is that fairness surely requires that the parties especially the losing party should be left in no doubt why they have won or lost. This is especially so since without reasons the losing party will not know (as was said in Ex parte Dave) whether the court has misdirected itself, and thus whether he may have an available appeal on the substance of the case. The second is that a requirement to give reasons concentrates the mind; if it is fulfilled, the resulting decision is much more likely to be soundly based on the evidence than if it is not.

  • (2) The first of these aspects implies that want of reasons may be a good self-standing ground of appeal. Where because no reasons are given it is impossible to tell whether the judge has gone wrong on the law or the facts, the losing party would be altogether deprived of his chance of an appeal unless the court entertains an appeal based on the lack of reasons itself.

  • (3) The extent of the duty, or rather the reach of what is required to fulfil it, depends on the subject matter. Where there is a straightforward factual dispute whose resolution depends simply on which witness is telling the truth about events which he claims to recall, it is likely to be enough for the judge (having, no doubt, summarised the evidence) to indicate simply that he...

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