EU court calls time on Rolex trademarks dispute
Men’s clothing brand wins defence of coronet logo | General Court dismisses luxury watchmaker’s argument that clothing and watches are in “proximate” markets | Claim “is not capable of calling into question the Board of Appeal’s assessment”.
Swiss watchmaker Rolex has failed to persuade an EU court that an EU Intellectual property Office (EUIPO) board erred in ruling that its coronet logo mark had not been infringed by a Nordic fashion brand.
The fifth chamber of the EU General Court handed down the decision today, January 18.
The luxury brand had sought an annulment of the decision of the Fourth Board of Appeal of the European Union Intellectual Property Office delivered in August 2021.
Background to the dispute
The dispute arose in November 2014, when a Denmark-based men's fashion brand PWT, obtained an international registration for a figurative mark representing a crown, covering clothing, footwear, headgear in class 25
Two years later, Rolex filed a notice of opposition to registration of the mark applied for claiming that it contravened its rights for an EU figurative mark dating from 2001, and covering ‘watches’ in class 14.
In October 2020, the EUIPO’s opposition division upheld this objection, prompting PWT to file a notice of appeal, which was then upheld by the Board of Appeal.
In doing so, the board found that the ‘watches’ in class 14 were dissimilar to the ‘clothing, footwear, headgear’ in class 25 and found that there was no likelihood of confusion. It also held that the reputation of the earlier composite mark had been established solely for wristwatches.
Low degree of similarity
The board ruled that the Rolex mark and the mark applied for were, at most, visually similar to a very low degree, that a phonetic comparison was not possible between them, and that the conceptual similarity resulting from the common presence of a crown had “a very limited impact”.
Consequently, it inferred that the relevant public would not make a link between those marks, with the result that no risk of injury to the reputation of the earlier mark would arise.
On appeal, Rolex proceeded to criticise the Board of Appeal for incorrectly holding that there were no similarities between the goods at issue and for finding that there was no likelihood of confusion.
The watchmaker also faulted the board for comparing the goods at issue without having taken account of their usual origin or the usual market practice followed in relation to them.
It argued that those goods “belong to market segments which are proximate” and that their purchase “may be motivated by the search for an aesthetic complementarity”.
But today, the court agreed with the board’s finding that the goods were different in nature and intended purpose, the former being intended to dress the human body and the latter to be worn for personal adornment.
It added that those goods did not share the same distribution channels and that they were neither in competition nor complementary.
Further, the court ruled that Rolex was wrong to criticise the board for not expressly mentioning the supposed proximity of the market segments to which the goods at issue belong and “for having thereby vitiated its assessment of a failure to state reasons”.
Rolex’s claims that the goods at issue belong to market segments which are proximate, in the luxury goods sector were not substantiated, it added.
“That claim is not capable of calling into question the Board of Appeal’s assessment that the goods at issue are not in competition with each other,” said the court.
Online trends exert ‘no impact’
The court acknowledged Rolex’s argument that growing importance of online trade had prompted a tendency towards convergence of fashion and technology, including wristwear.
But crucially, the court found that Rolex had failed to not submit any evidence to support that this trend had led to its mark being infringed.
“The applicant adds that this practice results in a certain cognitive behaviour and a certain state of mind, but without providing further detail.”
The court also found that while the goods at issue may be sold in the same commercial establishments, such as department stores, this was not particularly significant, “since very different kinds of goods may be found in such shops, without consumers automatically believing that they have the same origin”.
“Furthermore, the applicant’s arguments that the purchase of the goods at issue may be based on the search for an aesthetic complementarity must be rejected as ineffective. The applicant itself concedes that such a fact is insufficient to conclude that there is a similarity between those goods,” it said.
Consequently, the court concluded that the Board of Appeal had been fully entitled to arrive at its decision and rejected Rolex’s appeal in its entirety.
The court proceeded to order Rolex to pay EUIPO’s costs.
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