Rolex watches' crowns do not exclude the registration of crowns for clothing

European Union trade mark No 1455757 (figurative) registered, inter alia, in Class 14 of the Nice Classification, with the description 'wristwatches', represented graphically as follows:

The EUIPO Opposition Division upheld the opposition on the basis of the reputation of Art. 8.5 EUTMR.

PWT A/S (the applicant for the opposing brand) appealed against that decision and the EUIPO Board of Appeal allowed the appeal, on the following grounds:

• As regards the likelihood of confusion: I held that the goods covered were dissimilar: that is, the goods in Class 25 "clothing, footwear, headgear" of the mark applied for are not similar to the goods in Class 14 "wristwatches" of the opposing marks.
• As regards the reputation of the earlier marks: I held that, according to the evidence adduced, on the purely figurative mark (the Rolex crown), reputation is not established and, on the composite figurative mark, it is only well known in respect of wristwatches.
• On the other hand, he added that these are visual marks with a low degree of similarity, the fact that they are crowns has a very limited impact from a conceptual perspective and a phonetic comparison is not possible.

In the light of the foregoing, Rolex seeks the annulment of the Board of Appeal's decision before the General Court of the European Union (GC or Court). Notwithstanding the above, the Court delivers a judgment upholding the Board of Appeal's arguments.

In this regard, the following should be noted:

 As regards the likelihood of confusion ex 8.1.b EUTMR, it follows that there is no similarity between the classes of goods and no likelihood of confusion on the part of the relevant public:

The classes at issue were not similar and the goods were different as regards their intended purpose and nature [paragraphs 23, 34].

• On the basis of the applicant's statements concerning the proximity of market segments (luxury goods sector), it states that the Board of Appeal's finding that those goods are not in competition with each other cannot be called into question (paragraphs 24, 33).
• It considers the applicant's allegation of 'aesthetic complementarity' between the goods to be insufficient to conclude that there is similarity [paragraph 32].
• In order for consumers to believe that those goods have the same commercial origin, they would have to consider it commonplace for those goods to be sold under the same brand, which generally implies that a large proportion of the producers and distributors are the same.
• It is also irrelevant that the goods in question may be sold in the same shops, since consumers may find very different goods in the same shop without automatically believing that they have the same origin [paragraphs 28, 31].

As regards the similarity of the earlier brands ex art. 8.5 EUTR, no actual or future harm has been demonstrated or proven:

• The reputation of the composite figurative brand and not that of the purely figurative one is recognised [paragraph 44].
• It is submitted that the applicant failed to state the reasons why any detriment had occurred or to demonstrate the existence of a risk of detriment to its brands in the future, whether, alternatively, to their distinctive character, their repute, or the unfair advantage taken of them [paragraphs 46, 52].

The GC therefore dismissed the actions brought by Rolex in their entirety, which consequently led to the registration of PWT A/S's figurative brand being upheld.

This judgment reaffirms the need to prove that there is a serious risk of injury to the distinctive character or the repute of the earlier brand in order for oppositions based on reputation ex art. 8.5 EUTMR to succeed. Therefore, it is not sufficient to prove the reputation of the earlier brands, but the existence of detriment, even if potential, must also be proven.