A battle over trademarks that has pitched Scottish watch and jewellery retailer ROX against global watch brand Rolex has come to an end, with the Intellectual Property Office dismissing Rolex’s claims that the retailer is benefitting from its fame by using a too-similar name to sell watches and giving ROX the green light to create its own brand of watches.
Rolex had tried to revoke a new trademark that ROX had applied for that covers “horological and chronometric instruments; watches and clocks; parts and fitting therefore" and "retail services in connection with horological and chronometric, watches and clocks". The retailer had a previous trademark covering these areas in place but it had fallen into disuse because ROX changed its logo and so was in the process of changing its trademark.
Rolex started proceedings with the Intellectual Property Office on July 4, 2011, to revoke the old and new trademarks held by ROX for the use of its brand name for “Jewellery, watches, clocks and horological instruments; key rings; parts and fittings for the aforesaid goods”, objecting to the section related to watches, clocks and horological instruments.
ROX had held its old trademark since July 29, 2005 and then in 2010 ROX applied to register the trademark for a modified version of the existing ROX logo to cover “horological and chronometric instruments; watches and clocks; parts and fitting therefor" and "retail services in connection with horological and chronometric, watches and clocks".
Rolex had enlisted the help of a private investigation firm Farncombe International to look into the retail sale of own-brand watches by ROX and found that the retailer had not sold watches branded as ROX but only third-party brands under the ROX retail banner.
Ian Crichton Starr of D Young & Co argued on Rolex’s behalf that ROX had not used its old trademark in relation to watches properly as it has not to date sold watches under the ROX brand and so had exceeded the five years allowed before a trademark falls into exemption.
ROX managing director Kyron Keogh countered that the while the retailer had not sold any watch products under the ROX brand, it has sold many third-party brands under the ROX retail brand and supplied evidence of this in court by way of ROX-branded swing tags attached to watches as well as ROX-branded packaging elements such as watch care guides.
Intellectual Property Office comptroller-general for the registrar Martin Boyle found against ROX in this section of the judgement and said that the retailer “failed to show genuine use of the mark in either relevant period in relation to the goods in respect of which Rolex seeks revocation of the registration”. The specification left standing will read “Jewellery; key rings; parts and fittings for the aforesaid goods” and the watch part of the trademark has been revoked, although this will be of little relevance to the retailer as it no longer operates under this trademark.
Rolex also tried to revoke the new trademark that ROX is in the process of applying for on the basis that the wording of ROX is too similar to Rolex and that consumers might fail to spot the difference and so confusion would ensue, adding that the names Rolex and ROX are too similar to be both working in the watch industry.
The Swiss watch brand accused the retailer of trying to piggyback on its success by using a brand name for watches that it felt was too similar.
Rolex UK general manger David Cutler also raised the issue that he believed consumers wouldn’t understand the word play that ROX is used to suggest a precious stone and for one exhibit he took with him a selection “a number of different definitions of the word ‘rock’”, according to official documents.
Keogh countered this with word play used by the Scottish Sun for a story written about the retailer. While Boyle said that while “British journalism’s obsession with punning is evident” he did not believe “this degree of sensitivity to potential word-play is necessarily shared by the average consumer”.
Despite this statement, Boyle ruled in favour of ROX entirely and so the retailer’s new trademark application will be allowed to proceed to registration. The decision also means that ROX now has the green light to create its own brand of watches under the ROX banner, although it will have to do so within the next five years to avoid any problems arising due to improper use of a trademark.
Boyle said: “I have found the marks to have only very low degrees of both visual and aural similarity, and to be neither similar nor dissimilar conceptually. Bearing all this in mind, together with my assessment of the nature of the average consumer and their purchasing process, and having regard to the interdependency principle, I do not consider there is a likelihood that the average consumer will be directly confused.”
Cutler also brought up the argument that there were no other watch brands that started with the letters R and O and ended in X, but this argument was thrown out due to lack of evidence. Boyle added that he believes that ROX and Rolex are in competition with each other, and it is not a case of ROX using a similar name to Rolex to benefit financially.
With both sides winning some victories, Boyle did not award costs to either side.
Speaking after the verdict, Keogh of ROX said: “Over the years we have carefully developed and nurtured our business to create a brand that has become synonymous with fashion, style and luxury. It has always been our aim to launch our own range of ROX jewellery, watches and luxury lifestyle goods to sit alongside the enviable range of designer jewellery we carry which includes the likes of Ebel, Gc and Raymond Weil. We already have our own range of ROX Silver jewellery and have recently appointed Scottish fashion designer Marc Ross as our creative director as we look to diversify our business and develop the ROX brand.
“We have the greatest respect for Rolex, it is one of the most prestigious brands in the world, and we are pleased that the issue has been resolved. We are now looking forward to our exciting expansion plans which include the opening of our first store in Edinburgh – a beautiful 2,500sq ft boutique in the newly redeveloped Assembly Rooms on George Street which will play host to its own Thrill Room and champagne bar.”
Rolex declined to comment.