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:
- 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 ]
- 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.