Rolex Lands Win in Fight to Block Watchmaker Franck Muller’s “Mariner” Trademark

Image: Rolex


Rolex Lands Win in Fight to Block Watchmaker Franck Muller’s “Mariner” Trademark

Rolex has prevailed over Franck Muller Group in the latter watchmaker’s quest to register “Mariner” as a trademark in Singapore. In light of the similarity between Muller’s “Mariner” mark and “Submariner,” which is the trademark-protected name of one ...

July 7, 2020 - By TFL

Rolex Lands Win in Fight to Block Watchmaker Franck Muller’s “Mariner” Trademark

Image : Rolex

Case Documentation

Rolex Lands Win in Fight to Block Watchmaker Franck Muller’s “Mariner” Trademark

Rolex has prevailed over Franck Muller Group in the latter watchmaker’s quest to register “Mariner” as a trademark in Singapore. In light of the similarity between Muller’s “Mariner” mark and “Submariner,” which is the trademark-protected name of one of Rolex’s most well-known watch styles, Rolex initiated opposition proceedings to formally prevent Muller’s FMTM Distribution Ltd. from securing a trademark registration from the Intellectual Property Office of Singapore (“IPOS”) for the soundalike mark.

The rival watchmakers’ fight got its start back in February 2016 when Franck Muller Group filed a trademark application with the IPOS for the word “Mariner” for use on watches. In response to Muller’s application, Rolex lodged an opposition with the trademark body in April 2018 (shortly after Muller’s pending mark was published for opposition), and argued that Muller – which is known for its unique and modern-looking timepieces – should be blocked from registering “Mariner” for use on wristwatches. Its reasoning? The “Mariner” mark is “confusingly similar to Rolex’s earlier trademark, ‘Submariner,’ also in [international trademark] Class 14” for use on watches. 

In the IPOS’ decision, Hearing Officer Tony Yeo sided with Rolex, thereby, shutting down Muller’s quest to register the similar mark, but not before disagreeing with Rolex on a few points. For one thing, Yeo shot down Rolex’s argument that “Submariner” – as “a pure word mark in block letters composed of an unusual word – may be considered to have “a strong level of inherent distinctiveness, by virtue of the fact that it has no meaning or relationship in relation to any of the goods it is registered for.” 

Given that “submariner” is a “known English word” and that the nearly 70-year-old watch style, itself, was – by Rolex’s own account – “designed specifically for divers and professionals who worked underwater,” which Muller argued in an earlier filing, Yeo states that “the connection between [Rolex’s] trademark and its goods is clear.” As such, Yeo found that the “Submariner” mark possesses “only a medium degree of inherent distinctiveness, not a strong one,” and thus, would benefit from a showing of acquired distinctiveness (i.e., evidence that consumers have come to link the “Submariner” mark with a single source). 

To this, Rolex asserted that its mark has, in fact, acquired distinctiveness, and pointed to various pieces of potential evidence of secondary meaning, including a list of its retail outposts in Singapore, examples of local advertising campaigns, an article regarding “The Rolex Submariner Exhibition” held in Singapore, another article stating that Rolex products account for “11.8 percent of the global watch market,” and “four online articles relating to the James Bond film series,” given the character and creator Ian Fleming’s longstanding ties to Rolex, among other things.  

Siding with Muller, Yeo asserted that “none of this evidence supports [Rolex’s] case on acquired distinctiveness,” and noted that “one [of the] important factors weighing against Rolex’s evidence is that every piece of evidence features the ‘ROLEX’ mark prominently alongside the [Submariner] mark.”

“If the [Submariner] mark is constantly accompanied by the ‘ROLEX’ mark in every piece of evidence, then I cannot see how it can be said that [it] is a mark that has acquired distinctiveness,” Yeo stated. (It is worth noting that later on the decision, Yeo says that Muller suffers from the same reality in light of a “lack of evidence that the [“Mariner”] mark has ever been used on its own” without the “Franck Muller” mark, which is “fatal to a finding that [it] possesses an established reputation.”)

In furtherance of that argument, the IPOS Hearing Officer points to a 2010 decision, in which a Singapore trial judge held that Louis Vuitton’s circular Flower Quatrefoil mark is not “in itself distinctive … [given] that there is no evidence that the Flower Quatrefoil mark has ever been promoted or used on its own.” Instead, it is almost always used as part of Louis Vuitton’s Toile Monogram or otherwise alongside “LV” trademarks. (Fun fact: Louis Vuitton claims separate trademark rights in and maintains registrations for each individual element in its Toile Monogram print, namely, the three different flower icons and the “LV” logo, as well as the print as a whole).

Noticeably absent from Rolex’s evidence of acquired distinctiveness: sales or advertising figures, which is information commonly included in a party’s attempt to show that its mark has acquired distinctiveness. When probed by the IPOS about why it did not include such information, privately-held Rolex stated that the “figures were sensitive, and that it did not want to run the risk of leaking confidential information,” but that “the absence of such figures did not rule out a finding that a mark was well known in Singapore, or that it possessed goodwill.” 

“I accept that such figures are strictly speaking not necessary. However, they are undoubtedly highly useful,” Yeo stated, asserting that Rolex could have invoked a number of measures to ensure that the information remained confidential, as many other parties in its position have done in the past. Ultimately, Yeo found that Rolex “has not sufficiently made out its case of acquired distinctiveness,” and thus, the “Submariner” mark “possesses a medium degree of distinctiveness, no higher or lower than the norm.” Consequently, Yeo notes that the mark “does not enjoy a high threshold before a competing sign will be considered dissimilar to it.” 

Nonetheless, he still sided with Rolex on the basis that the just because Rolex’s mark has the prefix “sub” on it, does not make for such a significant difference that Muller’s “mariner” mark will be able to “distinguish itself sufficiently and substantially” from Rolex’s mark, especially since “it is clear that this prefix is relatively small compared to the seven-letter common denominator ‘Mariner.’” More than that, both parties’ marks “convey the ideas of the sea and a sailor, thereby establishing conceptual similarity,” and “the goods carried by [Rolex] and [Muller] are similar, if not identical,” making the marks “more similar than dissimilar.” 

Finally, in terms of likelihood of confusion, the IPOS considered a number of factors, including the channels through which the parties’ watches are sold and the sophistication of the consumers for the parties’ multi-thousand dollar timepieces. As Muller argued, “Watches of the sort sold [by Rolex and Muller] would be sold either in brand-specific watch boutiques, or in multi-brand retail outlets which both separate watches of different brands and have on hand knowledgeable salespeople to help customers tell watches apart.” 

Yeo took issue with this, stating that “the proper consideration here is the circumstances under which a consumer may purchase watches in general, which I think does not include as many protections against confusion as [Muller] would like to submit.” And beyond that, Yeo says, “While I would agree that consumers tend to be somewhat attentive and fastidious while purchasing watches, I do not think that they would be quite so invested as to preclude a likelihood of confusion.” Still yet, Yeo stated that he does “not think that the average consumer would have specialist knowledge in relation to watches that he might bring to bear in making a purchase.” 

With this in mind, Yeo found that a likelihood of confusion exists between the two watch companies’ marks, and thus, refused to register Muller’s mark. He also stated that there is “a real likelihood of damage to [Rolex’s] goodwill [as a result of Muller’s “Mariner” mark] because the parties are in direct competition with each other.” 

*The matter is Rolex S.A. v FMTM Distribution Ltd [2020] SGIPOS 6. 

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