Rolex case: the importance of the evidence supporting the injury to the reputed mark

[30/01/2023]

The opposition lodged by Rolex against a figurative mark representing a crown and filed for “Clothing, footwear, headgear” was rejected by EUIPO, in particular on the ground that Rolex had not identified the injury or injuries that the use of this application might cause to its trademarks.

In a JUDGMENT of 18 January 2023, the General Court confirms the decision and rejects the appeal of Rolex, reminding that the broader protection under Article 8(5) of Regulation No 207/2009, presupposes a set of cumulative conditions:

“First, the earlier trade mark which is claimed to have a reputation must be registered. Secondly, that mark and the mark applied for must be identical or similar. Thirdly, it must have a reputation in the European Union, in the case of an earlier EU trade mark, or in the Member State concerned, in the case of an earlier national trade mark. Fourthly, the use without due cause of the mark applied for must lead to the risk that unfair advantage might be taken of the distinctive character or the repute of the earlier trade mark or that it might be detrimental to the distinctive character or the repute of the earlier trade mark”.

In this case, failure to satisfy one of them is therefore sufficient to render inapplicable the benefit of the regime for trademarks with reputation.