As Benjamin Franklin once said, ‘Time is Money’. Rolex have taken this to another level.
Valued at an eyewatering $8.35 billion in 2022, Rolex is a brand in a league of its own.
Known for its iconic status and longevity, having been founded in London in 1905, Rolex have a massive global reach.
The brand is instantly recognisable, with its crown logo. The demand for Rolex watches is unprecedented.
With this in mind, its latest move may be quite surprising.
Rolex have formally opposed an application by Oyster and Pop Limited in the UK. The application was filed for the words ‘Oyster and Pop’ for many goods including ‘Toy watches and clocks’ in class 28.
Oyster and Pop Limited was incorporated in the UK in July 2020, after its founders Emma Ross-McNairn and Sarah Davies collaborated on a passion project during the pandemic.
The two sisters decided to create a children’s clock – with the aim to ease children in their learning to tell the time. The clock was made with bright colours and included wording and numbers for children to benefit from. This product, launched in 2021, was a hit both in the UK and the USA. They have since expanded their product line to other educational items.
Despite a differing market, when seeking to protect their brand at the UK Intellectual Property Office, the sisters were hit with an opposition filed by Rolex.
An opposition is a formal challenge by an existing trade mark owner, in which they seek to block an ongoing application from being registered. There can be a number of grounds under which to do this, but in this case, Rolex claim that the ongoing application ‘Oyster and Pop’ is confusingly similar to their registered trade marks for ‘Oyster’.
Rolex Oyster watches originated in 1926, and are one of the business’s most recognisable models. A direct successor of the original Oyster, the first waterproof wristwatch, the Rolex Oyster Perpetual watches can cost anywhere north of £5000.00 to buy.
In order for Rolex to be successful in their opposition, they need to evidence three points:
- The marks are either identical or similar
- The goods and services are either identical or similar
- If the marks or goods are similar, there is a likelihood of confusion on the part of the public.
A likelihood of confusion exists when there is a risk that the relevant part of the public may deem the two brands to be connected or believe that a specific product is being sold by the opposer. A number of elements are considered, including the sales channels of the products, the target audience, and the intended purpose of the goods.
In this case, it is Oyster and Pop Limited’s position that such confusion cannot exist. In a statement, they have pointed to the differences in target audience and price as reasons why consumers cannot be confused by the product and therefore a reason as to why the opposition should fail.
It is unclear as to whether they will formally defend the opposition filed at the UK Intellectual Property Office but they must do so in order to keep their trade mark application alive.
If they do choose to formally defend, both parties will have the opportunity to submit witness evidence in support of their case. It is then down to a Hearing Officer at the UK Intellectual Property Office, which functions as a Tribunal to make a decision. This decision can then be appealed in limited grounds, if ether party disagrees with the decision.
If the opposition is not defended, then it is likely that Rolex will succeed in blocking the trade mark application from being registered.
This is a classic case of David v Goliath, the sort of case which has gone both ways in the past. Time will tell who the ultimate winner will be.
