David v Goliath? How should a big brand owner go about enforcing their trade mark rights?

Trade Marks were in the news again recently when Rolex contacted a children’s clock firm in Devon to ask it to rebrand.

According to press reports, Oyster & Pop is a small company set up by a pair of sisters in 2020, selling colourful wall clocks designed to help children learn to tell the time. Apparently, the Oyster element of the company name came from the name of the road where the sisters grew up in Torbay.

Rolex has an OYSTER PERPETUAL range of watches, and owns several UK Trade Mark Registrations for the mark OYSTER and OYSTER PERPETUAL covering watches and clocks, at least one of which dates back to 1926.

In letters that were reportedly described by the recipient as “bullish”, “disappointing and aggressive”, Rolex’s representatives wrote to Oyster & Pop to ask them to rebrand, stating that “Consumers will inevitably be misled into thinking that your products emanate from Rolex.". The sisters have described the situation as “nonsense”.

As a luxury brand known throughout the world, Rolex is likely to have to spend a considerable amount of time fighting the inevitable tide of counterfeiters and chancers trying to take advantage of their strong reputation. In this case, it appears that their robust stance may have backfired, at least from a publicity perspective.

The BBC coverage of the story has a “David v Goliath” tone to it, being somewhat slanted towards the point of view of the small Devon company. It appears that Rolex did not provide their own comment on the case when contacted by the BBC, which may not have helped with the framing of the report. Nevertheless, it is rare to see the media take the brand owner’s side in a dispute of this type, where the alleged infringer is a small entity and has apparently innocently adopted a trade mark.

We cannot know the full details of the matter, and it may well be that the letters sent on Rolex’s behalf were unnecessarily “bullish” and aggressive. A lot of cease and desist letters are. The Devon sisters genuinely don’t appear to be trying take advantage of Rolex’s brand. People may disagree about the likelihood of confusion between use of the marks OYSTER PERPETUAL for luxury watches and OYSTER & POP for relatively low-cost children’s clocks. But on the face of it, Rolex’s position is not entirely without merit.

This case flags the need for businesses of whatever size to consider trade mark clearance searching before committing to a new brand name, but also raises the important question of how a big brand owner should seek to enforce their trade mark rights against “the little guy” without encountering negative publicity and coming across as a bully.

Some big companies have managed to get it right. Jack Daniels’ lawyers famously sent an “exceedingly polite” cease and desist letter in 2012, which went viral. In that letter (to someone who had created a book cover that resembled a Jack Daniels label), they indicated that they were flattered by the recipient’s obvious affection for their brand, but explained: “if we allow uses like this one, we run the very real risk that our trademark will be weakened. As a fan of the brand, I’m sure that is not something you intended or would want to see happen. …”.

In most circumstances, the extreme “Jack Daniels” approach is not likely to be possible or appropriate. However, it makes sense that a letter that takes a gentler, less aggressive tone, and seeks to explain why the brand owner is concerned, is likely to receive a more positive and constructive response. When considering whether to make an approach to a small company, and then deciding how best to frame it, the brand owner needs to consider how the communication would come across if it were reproduced in the press or on social media. But they should not be deterred from taking action to enforce their trade marks and protect their reputation in situations where there is a genuine need to do so.

Brand owners need to choose their battles, and then their words, very carefully.

We are a European firm and assist our clients to protect their IP rights in the UK, Europe and worldwide from our offices in the UK and The Netherlands and through our international network of trusted local attorneys.

For further information regarding protection of your trade marks and related matters, please contact Caroline or a member of Abel + Imray’s Trade Marks team.