[Bluco]

The claim that Rolex lawyers have made, that a reasonable consumer will be confused, and come to believe these children's clocks are made by Rolex, is absurd.

Is that actually the case, or is that just the narrative the press are taking because its hyperbolic and makes the action sound absurd. I haven’t seen the actual legal text.

 

[Lonard Little]

Is that actually the case, or is that just the narrative the press are taking because its hyperbolic and makes the action sound absurd. I haven’t seen the actual legal text.

The sort of person who knows that an Oyster watch is a type of Rolex (I didn't, and I won't remember it this time next week), does not buy a £25 clock and think that they're getting a Rolex. To paraphrase Hot Fuzz: you don't need to see legal text to work that out.

 

[Archer]

Is that actually the case, or is that just the narrative the press are taking because its hyperbolic and makes the action sound absurd. I haven’t seen the actual legal text.

Well, the remarks are in quotations in the article, so this is, without evidence to the contrary, a quote from the legal documents Rolex sent:

Lawyers for Rolex argued that the 'average, reasonably well informed consumer' would likely call the Rolex line of watches to mind when looking at the Oyster & Pop logo.

They added: 'Consumers will inevitably be misled into thinking that your products emanate from Rolex.'

 

[Seabee1]

How would they respond to this"

You've Tried The Rest
Now Try the X
ROLL X Toilet Paper
Making Your Business Our Business

KEEPING THE TRENCHES CLEAN SINCE 1914

 

[Archer]

Archer, the devil's in the details on this one. Have those other web sites actually entered into an agreement with Rolex to use one of their trademarked names? Or do they just sell watches that look a lot like Rolex, and may even descriptively mention Rolex in the nominative sense ("similar to..."), and have posted a disclaimer of their own accord to cover their bases?

Regardless if they have entered into an agreement or not, this is very commonly done. These are companies selling real Rolex parts, and generic Rolex parts. Since Rolex at one time actually supplied all these places with parts for resale, there's zero doubt that Rolex is aware of them and what they are doing. Some examples...

Cousins in the UK, so same jurisdiction as the Oyster & Pop clock company:

Casker in the US:

Jules Borel in the US:

Otto Frei in the US:

Esslinger in the US:

I could go on, but you get the picture. These companies regularly use both the Rolex name, and the names of specific models.

Now if Rolex is willing to allow this - places selling actual parts for their watches so the association couldn't be more clear - without taking any action, then why would they go after a small operation like Oyster & Pop, where there's clearly (to anyone with even 1/2 a brain) no connection to Rolex?

Now if this isn't enough, let's look at Time Delay Corporation in the US...this has their disclaimer:

So what do they make? Let's see:

Yes, custom dials, as well as custom bezels. But let's focus on the dials, because that has Rolex's trademarked names all over them...but they have marks on the dials indicating they are made by Time Delay - see the very bottom text:

So in this context, where companies regularly sell products with Rolex trademarks on them, and sell products for Rolex watches without any legal action from Rolex, does it not seem a bit much that they go after a couple of women making clocks for kids with no real connection to Rolex or any of their products?

I can only speak for myself, but being in the industry, Rolex is generally seen as the big green bully of the watch world, and this particular action just reinforces that for me. They are not a company I would feel comfortable doing business with...

 

[Archer]

How would they respond to this"

You've Tried The Rest
Now Try the X
ROLL X Toilet Paper
Making Your Business Our Business
View attachment 17180368
KEEPING THE TRENCHES CLEAN SINCE 1914

You mean this?

 

[Seabee1]

You mean this?

😱 😆

 

[Archer]

😱 😆

Don't you always wipe your arse with Rolex? I do!

 

[BrianBinFL]

What could be less obnoxious than sending a private notice to the company?

Well, not saying insane crap like this for starters: "the average, reasonably well informed consumer would likely call the Rolex line of watches to mind when looking at the Oyster & Pop logo".

You say you don't blame Rolex, yet you blame Rolex. You say you get IP but it seems like you don't understand TM law.

I'm far from an expert on TM law (more seasoned on patent law), but I did start pulling up which classifications Rolex has trade marked the term "oyster" by itself (versus other marks like "oystersteel", "oysterquartz", "oysterlock", "oysterflex", etc.) Though I decided that nobody probably cared and stopped looking into it, it was starting to look to me like the way "Oyster" is registered in the U.S. wouldn't even apply to clocks.

Rolex's "oyster" trademark is registered in two categories:

1. IC 018. US 001 002 003 022 041. G & S: LUGGAGE, SUITCASES, [ ATTACHE CASES, BRIEFCASES, TOILETRY CASES SOLD EMPTY, GARMENT BAGS FOR TRAVEL, SAMPLE CASES IN THE NATURE OF LARGE CARRYING CASES, SHOULDER BAGS, TOTE BAGS, DUFFLE BAGS, PURSES, WALLETS AND HANDBAGS ]
2. IC 014. US 027. G & S: WATCHES, [ MOVEMENTS, CASES, ] DIALS [ , AND OTHER PARTS OF WATCHES ]. FIRST USE: 19260700. FIRST USE IN COMMERCE: 19260700

Now "small clocks" is 14-168, not 14-027. And 14-027 (the category they registered it in) is "watches, movements, cases, dials, and other parts of watches". And of course clocks and watches are not the same thing.

Now I know that "famous marks" automatically get broader protection than ordinary marks. But is the "oyster" mark famous? Certainly "Rolex" is a famous mark. If you walk up to anybody on the street and ask "what is Rolex?" they will almost certainly know. But if you walk up to the average person on the street and say "what is Oyster, other than the animal?", or even "if you see a clock that says Oyster on it, what do you think of?", I'd aver that they do not answer "a Rolex wristwatch".

All of the above notwithstanding, it appears that the present action (or threat of action) is occurring in the UK. Therefore the analysis of the U.S. registrations of the word "Oyster", and the discussion of U.S. trademark law, is not particularly relevant. I have no idea how the mark is registered in the UK, nor any clue whatsoever about how UK trademark law works.

If you understand TM law, then you would know that Rolex had no choice but to defend the TM, otherwise they wouldn't be able to prevent knockoffs from using the Oyster name on their watches. Any brand would have had to do the same thing, whether they like it or not.

Well, according to one article the Oyster & Pop folks tangled with Rolex in the U.S. when O&P attempting to register their name as a mark. Rolex objected. But then Rolex apparently agreed that if Oyster & Pop changed the category to "Childrens Toys and Games" instead of "Clocks", then Rolex would be OK with it. That seems reasonable. But then I guess Rolex decided they weren't OK with it after all.

The only reason this case seems obnoxious is because the clock company chose to rely on the ignorant court of public opinion for sympathy, by publicizing the situation. After all, they didn't have to talk to the press, right? I find them to be a bit disingenuous in playing the victim, given that their legal counsel would have explained the TM law to them.

I will agree that O&P should have done a trademark search up front. But I would guess that this is a very small operation. They probably had no clue if this product would be successful or not and launched it on a shoe string budget. Once they saw they had a winner then they probably said "oh man, we better protect this name". And then they found out they had a problem.

Now all of that is speculation, but this certainly does not appear to be a case of some major manufacturer like Hasbro or Mattell launching a new product and having ample resources to do all of the things that we might suggest that O&P should have done. And of course I know that none of that matters in the analysis of the IP issues involved here. I'm just saying that not every little endeavor is going to begin with a discussion with an IP attorney. But yes, of course they proceed at their own peril for not doing so.

With what I've looked at so far, if their registered marks in the UK are similar to their registered marks in the US, I'm not even certain Rolex has the legal ability to prevent O&P from using the word Oyster the way they have. But they have the money to bully the defendant into submission, so that wouldn't matter much. If however they do have the legal right to preclude O&P from using the mark, then yes, they must defend their mark.

 

[Seabee1]

Don't you always wipe your arse with Rolex? I do!

it seems only fitting and remember;
Rollex...keeping the trenches clean since 1914

 

[Al.Macrest]

Now if Rolex is willing to allow this - places selling actual parts for their watches so the association couldn't be more clear - without taking any action, then why would they go after a small operation like Oyster & Pop, where there's clearly (to anyone with even 1/2 a brain) no connection to Rolex?
...
So in this context, where companies regularly sell products with Rolex trademarks on them, and sell products for Rolex watches without any legal action from Rolex, does it not seem a bit much that they go after a couple of women making clocks for kids with no real connection to Rolex or any of their products?

No, it doesn't seem a bit much because there's a huge distinction.
These examples are parts, and references to Rolex trademarked names are in the nominative sense as references. There's nothing illegal about that, nor could Rolex do anything about it. Oyster & Pop are using a trademarked name as a part of their trade name within the same trade. That's what got them in hot water. Rolex is not trying to bully them, but they're forced to do something about it because if they don't, other people making knockoff watches could use the Oyster name and there's nothing Rolex could do about it. This isn't really about Rolex bullying Oyster & Pop. It's about Oyster & Pop putting Rolex in a position where they have to defend the trademark so other entities don't abuse it. I can't make it any clearer than that.

 

[Archer]

No, it doesn't seem a bit much because there's a huge distinction.
These examples are parts, and references to Rolex trademarked names are in the nominative sense as references. There's nothing illegal about that, nor could Rolex do anything about it. Oyster & Pop are using a trademarked name as a part of their trade name within the same trade. That's what got them in hot water. Rolex is not trying to bully them, but they're forced to do something about it because if they don't, other people making knockoff watches could use the Oyster name and there's nothing Rolex could do about it. This isn't really about Rolex bullying Oyster & Pop. It's about Oyster & Pop putting Rolex in a position where they have to defend the trademark so other entities don't abuse it. I can't make it any clearer than that.

So accompany making dials with the Rolex name is okay? Seriously?

 

[Panerol Forte]

No, it doesn't seem a bit much because there's a huge distinction.
These examples are parts, and references to Rolex trademarked names are in the nominative sense as references. There's nothing illegal about that, nor could Rolex do anything about it. Oyster & Pop are using a trademarked name as a part of their trade name within the same trade. That's what got them in hot water. Rolex is not trying to bully them, but they're forced to do something about it because if they don't, other people making knockoff watches could use the Oyster name and there's nothing Rolex could do about it. This isn't really about Rolex bullying Oyster & Pop. It's about Oyster & Pop putting Rolex in a position where they have to defend the trademark so other entities don't abuse it. I can't make it any clearer than that.

You are a very patient man, I admire you 😉

 

[Al.Macrest]

You are a very patient man, I admire you 😉

I try, above all, to be respectful because I believe everyone deserves respect, even if they are not respectful in return. I'm not 100% successful, but everyone needs a goal. Some people are so biased against Rolex it's blatantly obvious in the twisted, tortured logic. If the company name was Sinn & Pop, and Sinn sent them the letter, there wouldn't even be a OP about it. I'm sure some people think I'm some sort of Rolex fan-boy, but all I'm trying to do is shine a flashlight in the dark. If it seems like I'm always defending Rolex, it's because Rolex is always the one people jump on. I would have defended any watch company that sent the letter.

Sucess is its own worse enemy. What I have noticed is that people resent success in others, be it people or companies. The greater the success, the greater the resentment. Read the news, see the patterns. Success means power and the more powerful companies or people become, the more other people fear them. Don't like Rolex? Build a better company instead of cursing the self-imposed darkness. People love to commiserate about these things because misery loves company.

 

[hiboost]

What could be less obnoxious than sending a private notice to the company? You say you don't blame Rolex, yet you blame Rolex. You say you get IP but it seems like you don't understand TM law. If you understand TM law, then you would know that Rolex had no choice but to defend the TM, otherwise they wouldn't be able to prevent knockoffs from using the Oyster name on their watches. Any brand would have had to do the same thing, whether they like it or not.

The only reason this case seems obnoxious is because the clock company chose to rely on the ignorant court of public opinion for sympathy, by publicizing the situation. After all, they didn't have to talk to the press, right? I find them to be a bit disingenuous in playing the victim, given that their legal counsel would have explained the TM law to them.

In the future please "cease and desist" from making such fact-based, reasonable posts. This is the internet, people don't come here for such things!

 

[MAWhite]

Rolex should be happy someone is trying to teach kids how to read time in an analog fashion. These would be the customers of the future.
In another generation or so when our watches are totally out of trend and only appreciated as fine art Rolex will be screwed because their stuff doesn’t stack up based on that comparison.

 

[egwatchfan]

I just love that new iteration of the rainbow Daytona on the left in your picture!!! 😀😀👍👍

 

[LARufCTR]

I went to buy one and the AD said I had to buy a bunch of crayons and school supplies to improve my place on the list. Said, it might be a little bit before I get the call

 

[Archer]

Some people are so biased against Rolex it's blatantly obvious in the twisted, tortured logic.

Some people use the word "bias" without really understanding what it means...

 

[Chicawolverina]

View attachment 17177392