“Omega” vs. “Mega” – no likelyhood of confusion in the luxury watch sector (2024)

Recently the Commercial Court of the Canton of Bern had to decide whether the use of the sign “Mega” on watches causes a likelihood of confusion with respect to trademarks owned by the watch manufacturer “Omega”.

The facts of the case were the following: Omega AG is the owner of several trademarks of the watch brand “Omega”, including the word mark “OMEGA”. At a watch and jewellery show in March 2009, Franck Muller, another Swiss watch manufacturer, presented some new models of its Aeternitas collection bearing the name “Mega”. The watches in question showed the word “Mega” in red letters in the centre of the dial, just underneath the words “Franck Muller” or “Franck Muller Geneva”, both written in black letters of approximately the same size as used for “Mega”.

Omega filed an action in order to prevent Franck Muller from using the sign “Mega” in Switzerland when offering or advertising watches, as well as with respect to any other use in connection with the trade in watches. In its decision last year, the Court dismissed Omega’s action based on the following arguments:

First of all, the Court dealt with the question of whether the sign “Mega” belongs to the public domain. Mega is a designation that derives from the Greek language and means “big”. It is a very well known and commonly used word in Switzerland. The sign therefore lacks distinctiveness. According to the Swiss Federal Institute of Intellectual Property’s guidelines, quality indications such as “master”, “super”, “top” or “mega” belong to the public domain. The Court therefore concluded that neither of the parties could have registered the sign “Mega” as such for watches. A likelihood of confusion according to art. 3 of the Trademark Act (TMA) as well as a likelihood of dilution according to art. 15 TMA cannot be based solely on a sign that belongs to the public domain. Therefore, this conclusion was already sufficient in order to reject Omega’s action. However, the Court commented on some other arguments raised by Omega.

Omega argued that Franck Muller had not used the sign “Mega” in a descriptive manner, but with the intention to distinguish its goods in the sense of art. 1 TMA and therefore in a commercial manner. This argument was based on the fact that “Mega” was put in the centre of the dial, in red letters, catching the attention of the customer. Franck Muller countered that the meaning of the word “Mega” is purely functional and the purpose of its use was to make an allusion to a very specialised clockwork named “grande complication”. In other words, “Mega” was primarily used to distinguish some of the watches of the Aeternitas collection from other watches of the same collection. Consequently, the Court analysed the actual use of the sign “Mega” on the Franck Muller watches. The Court found that the terms “Franck Muller” or “Franck Muller Geneva” and the word “Mega” were of the same size, were put on the same vertical axis and were positioned close to each other. According to the Court, all the words together give the impression of a unity. The Court further stated that the average consumer would conclude that the word “Mega” in this context refers to the qualities or special characteristics of the Franck Muller watch model. “Mega” was thus used in a descriptive manner.

The Court also examined the likelihood of confusion. Firstly, the Court made clear that the signs “Mega” and “Omega” may not be directly compared. Instead, “Omega” must be opposed to the combination of either “Mega” and “Franck Muller” or “Mega” and “Franck Muller Geneva”. Thereby, the Court found that there was no likelihood of confusion. The Court even denied the existence of a likelihood of confusion between “Omega” and “Mega” as such because of the visual, oral and conceptual differences between the two words. According to the Court, the only likelihood of confusion lies in the syllable “mega” – a word, however, that has no distinctiveness at all.

The Court then responded to another aspect. According to the TMA, the likelihood of confusion may only result from trademarks designating the same or similar goods or services. Although the goods in question are, on both sides, watches in the upper price segment, the Court denied their similarity. Firstly, the prices of the watches are quite far apart. The minimum price for a Franck Muller Mega watch is around CHF 1.2 million. In contrast, the most expensive Omega watches cost CHF 325’000. Secondly, the Court stated that the technology used for the Franck Muller watches is much more complex than the one used for the Omega watches. Thirdly, the two manufacturers used different distribution channels. While Omega watches can be bought in numerous stores, Franck Muller watches are made to order or are sold on special occasions only. Furthermore, the clientele is different, since the customers of Franck Muller are usually real watch enthusiasts, whereas Omega’s clientele are “just” those with the necessary means. Therefore, the Court denied a similarity of goods and consequently also a likelihood of confusion between the Omega trademarks and the sign in question.