World Intellectual Property Review quotes Charlotte Duly on the Rolex and Oyster & Pop trademark opposition

Luxury watchmaker ROLEX has sent a letter to a UK children’s clock business, demanding it rebrand over a ‘misleading’ name. Oyster & Pop, which sells a collection of colourful wall clocks and charts designed to help children to tell the time, has been accused of having a similar name to their line of watches, ‘Oyster Perpetual’.

Charlotte Duly, Head of Brand Protection provides comment for World Intellectual Property Review on the news.

• Does Rolex really stand a chance of winning against Oyster&Pop?

"Based on a legal analysis, Rolex stand a reasonable chance of successfully opposing Oyster & Pop’s trade mark registration.  They hold UK trade mark registrations for OYSTER as a plain word mark covering watches and clocks.  Oyster & Pop has filed for Oyster & Pop as a word mark covering the similar goods being toy watches and clocks.  The whole of Rolex’s mark appears at the beginning of Oyster & Pop’s mark and there is an argument that confusion is likely.  When Rolex’s reputation is taken into account, assuming they are asserting this, it is likely their chance of success will be enhanced. Oyster is well known in relation to watches and timepieces. In terms of stopping use by Oyster & Pop, the likelihood of success will be similar."

• Is trademark law sufficient to protect owners of very small businesses in cases such as these (in the UK and other relevant jurisdictions)

"On the whole, yes.  The trade mark registers are cluttered which can make clearing a new brand tricky but it is important to search before using and registering a new name.  The UK benefits from an online register that can be accessed without registration and a simple, cost effective system for registration and for objecting to third party trade marks.  UKIPO decisions are generally well considered and small businesses can represent themselves in proceedings if they wish (or finances necessitate this). Most trade mark disputes are settled amicably or by way of UKIPO proceedings without the need for court proceedings. Outside of the UK it is not always so user friendly, but on the whole trade mark protection is worthwhile for any size of business.  The key is to search, and if you do not be prepared to rebrand if you are not willing or able to negotiate a settlement with the earlier right holder."

• Is this a reasonable request by Rolex, or heavy-handed trademark bullying?

"Rolex are not being unreasonable.  Parties have a right to enforce their valuable IP, and in this situation there is a similar mark for identical goods.  It does not necessarily matter that Oyster & Pop’s product may look and feel very different to a luxury timepiece, they are requesting a trade mark registration that covers similar goods and it is not surprising Rolex has taken action.  They also use Oyster & Pop on the face of a wall clock. This arguably cuts across Rolex’s core business. If Rolex were to bring out a children’s range, and they should be free to do so, that would no doubt cause issues for both parties so they are no doubt looking to protect both current and future interests. This is therefore different to the coronet trade mark, where clothing was at issue.

However, the reasonableness of Rolex’s position depends on what exactly they have requested of Oyster & Pop. An entire rebrand seems unnecessary when only their clock product is likely to be an issue. It is unlikely that use of Oyster & Pop on chore charts, pens and fraction charts, for example, would cause Rolex any harm. This appears to be a situation where an amicable agreement ought to be reached, perhaps some amendment to the presence of “Oyster” on the clock face going forward with a sensible period allowed to amend that item. And in the meantime Oyster & Pop may even benefit from the publicity generated by this dispute, raising awareness of their brand through the media."

Read the full article in World Intellectual Property Review here (subscription required).