EUROPEAN UNION: General Court Rules Against Rolex in Appeal over Similarity and Unfair Advantage

Published: April 5, 2023

Rolex SA, which owns the ROLEX brand, considered one of the most reputable luxury watch brands in the world, lost its appeal against a decision of the European Union Intellectual Property Office (EUIPO) and the intervener, PWT A/S, before the EU General Court on January 18, 2023 (Case T‑726/21).

The battle began after PWT A/S registered the trademark 

for the goods “clothing, footwear, headgear” in Class 25. The EUIPO Opposition Division upheld Rolex’s opposition relying upon their marks 

(No: 1456201) and 

(No: 1455757) covering, among other things, “watches” in Class 14.

The EUIPO Board of Appeal overturned the first instance decision and Rolex appealed to the General Court for an annulment of the Board of Appeal’s decision.

The Board of Appeal found the goods in Class 25 and Class 14 to be dissimilar since they were different in nature and intended purpose, the former being intended for the human body and the latter to be worn for personal adornment. Further, those goods do not share the same distribution channels and do not compete with or complement each other.

On appeal, the General Court confirmed that jewelry and watches, even precious stones, on the one hand, and items of clothing, on the other, could not be considered related. It held that the argument that the goods may be sold in the same stores was not particularly significant since different kinds of goods may be found in such shops without consumers automatically believing that those goods have the same origin.

Rolex also claimed that the use of the mark applied for would take unfair advantage of, or be detrimental to, the distinctive character or the repute of the earlier composite mark. However, the Board of Appeal found that Rolex had not established any injury or serious risk of such injury pursuant to Article 8(5) of Regulation No. 207/2009, with the result that it failed to satisfy one of the necessary conditions for the application of that provision of the Trademark Law.

The General Court confirmed this reasoning and, therefore, the appeal was dismissed in its entirety and Rolex SA was ordered to pay the costs.

The impact of the conceptual similarity might be limited when it is not supported with evidence of the reputation of the figurative element alone, since the composite mark also shows the famous brand name ROLEX.

Kerem Gokmen

Read on INTA.org: https://www.inta.org/perspectives/law-practice/european-union-general-court-rules-against-rolex-in-appeal-over-similarity-and-unfair-advantage/