In February of last month, Montres Rolex SA was denied by the General Court from prohibiting “JUNK de LUXE”, a Danish clothing company, from registering a trademark for their logo which was similar to the Rolex crown logo. Here is what you should know about the Rolex doppelganger.
Logo related to Rolex doppelganger
Here is the logo in question that is said to be similar to the Rolex logo. Here is the Rolex doppelganger logo.
Rolex SA opposed the application under Article 3(a) of the EU Trade Marks Directive on the basis that the later mark was similar to their earlier mark. The General Court clarified there must also exist a likelihood of confusion on the public, which includes the likelihood of association between the trade marks in question. All these conditions are interdependent as was explained in the case of Sabel v Puma, where the Court ruled to assess the likelihood of confusion the visual, aural and conceptual similarities must be assessed by reference to the overall impression created by the marks, bearing in mind their distinctive components.
The opposed mark was registered for goods under class 25 which includes clothing, headgear and footwear whereas Rolex’s earlier mark was register solely under class 14 for watches. The crucial issue was whether Rolex SA could prove they had adequate enough reputation within the European Union and that the opposed mark would take unfair advantage of or be detrimental to the distinctive character or the reputation of the earlier trade mark.
When looking for likelihood of confusion The General Court established that the class of goods for which the opposed mark was registered for was inherently distinct from the class 14 which was covered by Rolex which includes watches. Therefore, the intended use and physical characteristics of the goods were different in that the opposed mark goods would be for decorating the body whilst the earlier mark would be for personal embellishment. Furthermore, it was determined that both goods were distributed through different means and were not competing with one another.
In regard to the similarity between the marks, the General Court concluded that at most the marks were visually similar to low degree and the conceptual similarity resulting from both crowns had a limited impact considering the different classes for which they were registered. The General Court implied from this that the relevant public would not associate between both trademarks, thus no threat of infringement to the reputation of the earlier Rolex mark.
Accordingly, Rolex failed to satisfy that the use of the opposed mark would take unfair advantage of or be detrimental to the distinctive character or the reputation of the earlier trade mark. The General Court dismissed the action entirely.
This decision highlights the fact that someone can register a similar trade mark to that of a very well-known company but if its use and purpose is unlike the earlier mark then it may prove difficult for a company to challenge successfully.
If you have any queries, contact our expert team of solicitors through info@lawdit.co.uk or alternatively give us a call on 023 8023 5979.
By Zohaib Tahir, an LLM student at Solent University
References for the Rolex doppelganger
Here are some references related to this post: the Rolex doppelganger. Please see them below.
- Montres Rolex SA (Encyclopedia.COM)
- The General Court (Wikipedia.ORG)
- JUNK de LUXE (JunkDeLuxe.COM)
- Rolex SA (Wikipedia.ORG)
- Article 3(a) of the EU Trade Marks Directive (EUR-LEX.Europa.EU)
- Sabel v Puma (LawProf.CO)
Posts related to the Rolex doppelganger
For more posts related to the Rolex doppelganger, please make sure that you check out some of these posts below that are related.
