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23 June 2020TrademarksSarah Morgan

Rolex secures ‘Mariner’ TM win against rival in Singapore

Watchmaker  Rolex has successfully opposed a trademark belonging to Swiss competitor  Franck Muller before the Intellectual Property Office of Singapore (IPOS).

In the  decision, published yesterday, June 22, IPOS concluded that Franck Muller-subsidiary FMTM Distribution’s ‘Mariner’ trademark was confusingly similar to Rolex’s ‘Submariner’ mark.

Rolex’s  Submariner watch was launched in 1953 and, according to Rolex, was the first divers’ wristwatch waterproof to a depth of 100 metres.

FMTM applied to register its ‘Mariner’ trademark in February 2016. Shortly after its publication two years later, Rolex opposed the registration.

Tony Yeo, an IP adjudicator for IPOS and the managing director of IP at Drew & Napier, concluded that the two trademarks (which both cover horological instruments in class 14) were similar.

He found that the two marks shared three identical (or at least very similar-sounding) syllables, which formed a substantial part of Rolex’s mark and the entirety of Franck Muller’s mark. Yeo also noted that both trademarks conveyed the ideas of the sea and a sailor.

“I was not persuaded by the applicant’s attempts to avert this conclusion. The applicant’s distinction between the visual image of a submarine or a submarine crew member evoked by the opponent’s mark and the notion of sailors prompted by the application mark draws too fine a line,” he added.

IPOS then went on to find that there was a likelihood of confusion, with Yeo stating that even though the public would exercise some care in making a watch purchase, the average consumer would not have specialist knowledge in relation to watches.

Yeo was also convinced by Rolex’s argument that it had goodwill in its business in Singapore, and that there would be a real likelihood of damage to Rolex’s goodwill because the parties are in direct competition. The elements of passing off were established and Rolex’s ground of opposition succeeded.

Registration of the ‘Mariner’ mark was refused.

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