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A sleazy British company is making a fake Rolex clock that threatens Rolexes revenues ($13,000,000,000 in 2021).

17353 Views 214 Replies 67 Participants Last post by  Watchman Dan
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Confusion is not the only thing a trademark infringer can do. The trademark owner must also defend against trademark "dilution" which is the element being raised here.

Trademark "dilution" is the likelihood that the use of the mark will diminish the strength or value of the trademark by reducing the mark's distinctiveness or destroying the mark's image by connecting it to something negative or devaluing. No likelihood of confusion needs to be shown.

This can happen in one instance, or over a long period of time. For example, if "oyster" is used by O&P, and then by Tonka, and then by Mattel, and then by a pizza shop, and then by [add infringer A, B and C], then the word "oyster" becomes diminished as a brand. It's not so much confusion as the fact that it's been used so many times in so many different applications, perhaps some in a negative way, that it doesn't have any value anymore.

Or it could be one bad use, like using the word "oyster" for a drug helps that helps with constipation (with a clock symbol to boot)...just a joke example by me, but I hope you see the point.

So the word "oyster" becoming somewhat of a joke because of this issue, people buying the clock just because of the word "oyster" in conjunction with the negativity brought out by this issue, is evidence that the word "oyster" is actually being devalued.

So again, the trademark owner is under a constant duty to protect their trademark or run the risk of losing their trademark or the value of their trademark.
Just a point - the term "oyster" can be used in any other industry or undertaking in categories that Rolex hasn't registered the trademark for. So a pizza shop using the term or a sportswear company using the term wouldn't attract Rolex's ire or give them a case against that business, because they are not competing in the range of products. What brought Oyster & Pop to Rolex's attention is the fact that it's a clock, which is close enough to Rolex's business that they need to care. Usually, you don't license out trademarks. First, it dilutes your brand, because you didn't care for it enough that you traded it like a commodity and second, a trademark is meant to be your distinct mark(s) in your industry to distinguish you from all others.
The first thing you are taught at law school is that the law and justice are not the same thing. However, laws are created and judicial decisions on existing laws are made with justice as an ideal.
This clock is NOT "close enough to Rolex's business." Rolex doesn't make a single clock. That's just, like, your opinion, man.
Not my opinion.
Rolex registered the "Oyster" trademark in the UK in 1926 under Trademark Class 14.

Class 14: Precious metals and their alloys; jewellery, costume jewellery, precious stones; horological and chronometric instruments, clocks and watches.

Just for reference, Rolex has also registered (USA years as indicative) "Oyster Perpetual" in 1978, "Oysterlock" in 1996, "Oysterclasp" in 2010, "Oystersteel" in 2018 and "Oysterflex" in 2015.

You're welcome.
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