LG Display Co., Ltd applied to register the ROLED trade mark for a variety of goods in class 9 including “wrist mounted telecommunication machines and implements being watches”. Rolex SA opposed the application on the following grounds:
- Due to a reputation in the ROLEX trade mark in Australia, use of the ROLED trade mark would be likely to deceive or cause confusion (section 60).
- The ROLED trade mark is substantially identical with or deceptively similar to its ROLEX trade mark (section 44).
- Use of the ROLED trade mark would be contrary to law (section 42b).
- LG Display is not the owner of the ROLED trade mark (section 58).
The opposition was only directed towards goods categorised as “wrist mounted telecommunication machines and implements being watches”, covered by the application.
In deciding the matter, the Delegate only considered the ground of opposition based on “reputation”.
Under Australian law, the registration of a trade mark may be opposed on the basis that another trade mark had, before the priority date of the opposed application, acquired a reputation in Australia and as a result of that application, the use of the opposed trade mark would be likely to deceive or cause confusion.
As most readers would know, Rolex is one of the world’s largest watch manufacturers with operations dating back to 1905. It has an impressive history in watch making including receiving an official chronometer certification in 1910 for developing a watch suitable to wear on the wrist, inventing the world’s first truly waterproof wristwatch in 1926 and the self-winding PERPETUAL rotor mechanism which led to the development of many modern automatic watches, creating the world’s first stopwatch featuring an automatic date-change component in 1945, and developing a watch which displayed the day of the week in 26 different languages.
Rolex relied on its reputation in its registered ROLEX trade mark covering “watches” in class 14 as the basis for this ground of opposition.
Firstly, the Delegate held that “smart watches” in class 9 are similar goods to “watches” in class 14.
Having established that the goods were similar, the Delegate proceeded to determine whether Rolex had established a sufficient reputation in its ROLEX trade mark as at the priority date of the opposed application.
Rolex filed evidence to show that its products are distributed through affiliated Rolex companies throughout the world and in Australia. All of its watches clearly and prominently show the ROLEX trade mark. Rolex had conducted business in Australia since about 1981 and had also provided various promotional products to Australian consumers such as caps, scarves, wallets, umbrellas, pens, calendars, and golf bars featuring the ROLEX trade mark. It had generated considerable revenue through the sale of its goods and services, and had invested substantial amounts in advertising and marketing its ROLEX branded goods around the world and in Australia.
Taking into account the above, the Delegate held that Rolex had established the requisite reputation.
Following this, the Delegate also held that, as a result of this reputation, the use of the ROLED trade mark for “wrist mounted telecommunication machines and implements being watches” would be likely to deceive or cause confusion.
The Delegate held that the marks shared striking similarities. Both consist of five letter words with the first four letters being identical. The only difference between the trade marks was the last letter, which is an “X” versus a “D”. Given these visual similarities, the Delegate held that these add to the potential for confusion between the marks, especially when the Opponent had demonstrated extensive use of its mark on time pieces.
Against this, LG argued that its ROLED trade mark was an indirect reference to the OLED display of its device. However, the Hearing Officer held that this element only adds to, rather than detracts from, the potential of confusion between the marks. This is because Rolex had demonstrated a “long-standing reputation in new developments with devices worn on the wrist, and OLED or even LED is a direct reference to a likely characteristic of the screen in the ‘smart watch’”. In addition, the Delegate queried LG’s decision to use “OLED” within its trade mark and then add the letter “R” out of all 26 available letters of the alphabet given that it would have been aware of the opponent’s ROLEX trade mark used on time pieces.
Overall, it was found that a significant number of consumers would at the very least experience a reasonable doubt as to the existence of some sort of connection between the ROLEX trade mark and ROLED trade mark when these are applied to similar goods. Therefore, the Delegate found that the use of the ROLED trade mark would be likely to mislead and cause confusion.
As the Delegate found in favour of Rolex under this ground, there was no need to consider any of the other grounds of opposition
Whilst a strong reputation of a trade mark may reduce the chances of deception and confusion, this was certainly not the case for Rolex. Applicants should be mindful when adopting a new trade mark to take into consideration whether that trade mark may be considered similar to another existing mark, especially one that is ubiquitous globally such as that of Rolex.