Rolex has secured its latest victory before the European Union Intellectual Property Office (EUIPO), successfully blocking the registration of a figurative trademark for use on watches on the basis that it would take unfair advantage of – and dilute – the distinctive character and reputation of Rolex’s trademark, which boasts an exceptional level of recognition among consumers in the EU, particularly for luxury watches. The decision, recently issued by the EUIPO’s Opposition Division, reinforces Rolex’s robust rights under trademark law in the EU and highlights the enduring strength of its reputation in the luxury market.
A Bit of Background: The dispute arose when Chinese applicant Bo Liu sought to register a figurative version of the “Laulex” mark for use on watches and watch parts. Rolex S.A. filed an opposition, citing its prior EU trademark registration for its well-known crown logo, among other marks, and invoked Article 8(5) of the EU Trademark Regulation, which protects marks with a “reputation” in the EU from registrations that could unfairly benefit from or dilute their distinctive character.
Brand Recognition in the Spotlight
The EUIPO’s Opposition Division sided with Rolex in a decision that was made pretty straightforward by the fact that Liu did not provide any counterarguments or evidence in defense of his application. The matter is interesting, nonetheless, given the “low” level of distinctiveness of certain elements of the two companies’ marks and the relatively minimal similarity between the marks.
Specifically, the EUIPO held that the depiction of a crown in Rolex’s mark is “usually associated with the concepts of royalty and luxury, [and] therefore, it is, at best, distinctive to a low degree, as it merely alludes to the higher quality of the goods in question.” At the same time, the element of a coat of arms with wings on the sides and a crown on top in Laulex mark is “also slightly allusive of a higher quality of goods and, therefore, its degree of distinctiveness is below average.”
As for the word elements of the marks, while both marks the letters “LEX,” they differ in their first letters, the EUIPO noted, ultimately finding that the two marks are visually and conceptually similar to only “a low degree” and aurally similar to “a below-average degree.”
Reputation Tips the Scales
The EUIPO still sided with Rolex and rejected the application for “Laulex” in large part because of Rolex’s “strong reputation in relation to watches, wristwatches, and the contested goods.” The Swiss watchmaker submitted a range of materials to demonstrate this, including advertising campaigns; judicial and administrative decisions recognizing the brand’s reputation; consumer surveys from Germany, Italy, Denmark, and other EU nations demonstrating high awareness of the Rolex name; extensive unsolicited press coverage; and evidence of Rolex’s long-standing market dominance and investment in brand promotion.
According to the EUIPO, this documentation “clearly demonstrated” that Rolex enjoys a “strong and long-standing reputation” in the EU, particularly for luxury watches.
With its strong reputation in mind, the EUIPO determined that even though the degree of similarity between the marks is relatively low and thus, consumers are unlikely to be directly confused between Rolex and Laulex), there is still a risk that the Laulex mark could “take unfair advantage of the distinctive character or repute of the earlier trademark.” The EUIPO also noted the potential risk of dilution. While the Laulex mark may not cause direct confusion, its presence in the market could weaken the distinctiveness of the Rolex brand over time, which is significant because Rolex’s luxury positioning (and pricing power) relies on exclusivity, and any association with a lesser-known – or lower quality – brand could erode its image.
TLDR: “Taking into account and weighing up all the relevant factors in the present case, especially the strong reputation of the earlier mark and the identity or close proximity of the product sectors of the marks, in combination with the similarities between the signs, the Opposition Division concludes that, when encountering the contested mark, despite its visual and aural differences, the relevant consumers are likely to associate it with the earlier sign, that is, establish a mental ‘link’ between the signs.”
A Broader Trend in Luxury Brand Protection
This is the latest in a series of victories for Rolex in its effort to protect its valuable trademarks. Rolex has aggressively pursued trademark enforcement in jurisdictions worldwide, which has seen the Swiss watch titan leverage significant evidence in favor of the recognition and reputation of its marks across the globe
The decision also reflects a broader trend in luxury trademark enforcement. As counterfeit markets and opportunistic filings continue to rise, leading brands have increasingly relied on Article 8(5) EU Trademark Regulation to block trademark applications for registrations that may not be outright copies but still pose a commercial risk.
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