Another day, another trademark win for Rolex. A few weeks ago, we covered Rolex’s trademark victory over California-based LaCalifornienne. This time around, Rolex has prevailed in an effort to block Franck Muller from trademarking the “Mariner” mark. Of course, this is due to the similarity with Rolex’s well-known “Submariner” mark, recognized and protected the world over.
The facts
Franck Muller had sought protection for the mark in Singapore, where it applied for a trademark for the word “Mariner” back in 2016. As soon as it could, Rolex filed opposition against the mark, basically arguing “hey, we’re the Submariner guys, you can’t let such a confusingly similar mark to be registered in the same trademark class.”
While Rolex emerged victorious in its opposition, the win wasn’t without some qualification by the Intellectual Property Office of Singapore (IPOS). Essentially, Rolex tried to claim that the word “Submariner” has “acquired distinctiveness”, or a secondary meaning — in other words, because of the extensive use and promotion of the mark, consumers now directly associate the mark with Rolex as the source of those goods. IPOS didn’t bite, pointing out that every piece of evidence Rolex submitted with the word “Submariner” had the “Rolex” trademark prominently alongside it.
Establishing acquired distinctiveness is important because trademarks that can establish it are afforded a higher threshold of protection: When brands want to protect these marks, or prevent similar marks from being registered (as was the case here), they generally have an easier time doing so. Here though, no such higher threshold is afforded, as IPOS held that the Submariner mark “possesses a medium degree of distinctiveness, no higher or lower than the norm.”
“If the [Submariner] mark is constantly accompanied by the ‘Rolex’ mark in every piece of evidence, then I cannot see how it can be said that [it] is a mark that has acquired distinctiveness,” the IPOS decision said. IPOS was also quick to point out that Muller’s submitted “Mariner” mark suffered from the same reality — it’s always used in conjunction with the Franck Muller name.
IPOS also pointed out that Rolex did not submit any sales or advertising figures to support its claim of acquired distinctiveness. IPOS will often use this type of information to support such a claim; ever secretive, Rolex declined to submit such figures.
Regardless, IPOS still sided with Rolex, pointing out that the short prefix “Sub” makes it unlikely that Muller will be able to sufficiently differentiate the “Mariner” mark. Further, both marks “convey the ideas of the sea and a sailor, thereby establishing conceptual similarity,” and “the goods carried by [both companies] are similar, if not identical.”
When evaluating trademarks, the standard is always the “likelihood of confusion,” — in this instance, whether a consumer might confuse a Muller Mariner as a Rolex Submariner. Muller argued that the likelihood of confusion is low, citing a number of factors, among them: the sophistication of consumers buying expensive watches (that’s us!), and the fact that watches are typically sold in brand-specific boutiques, or by knowledgeable salespeople.
IPOS took a different position, holding “the proper consideration here is the circumstances under which a consumer may purchase watches in general, which I think does not include as many protections against confusion as [Muller] would like to submit. While I would agree that consumers tend to be somewhat attentive and fastidious while purchasing watches, I do not think that they would be quite so invested as to preclude a likelihood of confusion.”
Franck Muller Mariner
The analysis
Listen, is anyone likely to confuse a Franck Muller Mariner for a Rolex Submariner? Perhaps not. IPOS basically relied on two factors in its opinion that Muller wouldn’t be able to sufficiently differentiate the Mariner mark from Submariner: (1) both marks evoke the sea, or vaguely gesture towards a seafaring life and (2) they’re only three letters apart man!
It’s not clear the first factor is doing a ton of work: Pretty much every dive watch made in the past 70 years uses an (increasingly obscure) word intended to conjure up images of Sebastian singing that life is better Under the Sea (Submersible, Seamaster, Bathyscaphe, Fifty Fathoms, Sea Wolf, Pelagos, etc.). Meanwhile, it also can’t be the case that one can’t trademark a word just because it looks like another word — are we to think that we couldn’t name a watch something like “Marinara” or “Sucksmariner” just because of their proximity to Rolex’s prized trademark?
The case struck me as odd at first: A mariner is a sailor, a crewman on a boat (or, more accurately, the team of Griffey Junior and Ichiro). Meanwhile, a submariner is a crewman on a submarine. Practically, the two words evoke quite different images. But literally, the words do look quite similar on a page — just a prefix separating them, as IPOS was keen to point out.
For purposes of this decision, it doesn’t matter that a Muller and a Rolex look nothing alike (we’re just evaluating the trademark-ability of a word). But if the standard is the likelihood of confusing the consumer, it’s hard to ignore this fact. Muller was right to point out that watch buying is often brand focused: We decide we want a Rolex (or a Muller, if one is blind), and then drill down into the specific model. On the other hand, the court was also right to point out that buyers aren’t always “fastidious” — we’re stupid, we get it!
In the end, Rolex has built up 70 years of goodwill in the Submariner name. It’s Rolex’s right to defend this goodwill at even the slightest hint of damage to the Crown, and it has done it successfully. What’s more, IPOS pointed out some new advertising strategies Rolex might take to ensure the name is even more protectable in the future. Let’s see if it uses them.