Rolex is a well-known international mark that created the world’s first waterproof watch, named Rolex Oyster Perpetual. The word “Oyster” is already known as part of the Rolex mark, so when others use that name on their product, people will think that the product comes from Rolex.
It happened to the company which produced analog clocks for children called Oyster & Pop. The similarity of the word “Oyster” as a mark for a product can make people assume that the product is affiliated with Rolex.
They added: “Consumers will inevitably be misled into thinking that your products emanate from Rolex.”
To prevent public misleading about the mark, Rolex then gave a somation letter to Oyster & Pop. The somation letter contains orders to replace the word “Oyster” as the product name, domain name, and inscription on the logo.
However, Oyster & Pop rejected the somation because the name “Oyster” they used was taken from the name of a street called “Oyster Bend” in Devon.
Quoted from DevonLive.com, Director of Emma, 46, said the situation was “nonsense” and that the lawyer’s letters had been “bullish”. She told the BBC: “If someone says oyster to me, the first thing I think of is the Oyster Card on the tube, not Rolex watches”.
In addition, Oyster & Pop also believes that Rolex, a large company that has sponsored major events such as Formula One, should not sue a small company.
So, how does the law regulate trademark regulation?
International Trademark Regulation
Reviewing Article 16, paragraph (2) of the TRIP’s Agreement,
Reviewing Article 16, paragraph (2) of the TRIP’s Agreement,
“Article 6 bis of the Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark.”
When the mark of a product is assumed by the public to be affiliated with a well-known mark, then if there is a decrease in product quality, the famous mark will also be affected.
People’s evaluation of the quality of these goods can decrease, and the brand becomes weak, so efforts to promote and maintain the good name of the well-known mark become tarnished. This is known as brand dilution.
US Trademark Regulation
Under the Federal Statute of the US Trademark Law 15 U.S.C. 1125 (c) clarifies that in addition to filing an infringement action, a trademark owner may also file a trademark action under federal or state law. Under federal law, a dilution claim can only be filed if the mark is “well-known.”
In deciding on a well-known brand, the court will look at the factors like, acquired level of uniquenes, duration and range of use, the amount of advertising and publicity, geographical market reach, trade routes, degree of recognition in trade, use of similar marks by third parties, and whether the mark is registered.
Under state law, a brand doesn’t need to be well-known to give rise to a dilution claim. Conversely, dilution is available if the brand has “selling power” or different quality and the two signs are substantially similar.
Indonesia Trademark Regulation
In Indonesia, we can look at article 83, paragraph (1) Law Number 20 of 2016, About Trademark and Geographical Indications. This regulation stated that the registered mark owner and/or mark license could file a lawsuit against another party who unlawfully uses the Mark to have similarities in essence or entirely for similar goods and/or services in the form of the compensation claim and/or cessation of all related actions use of the Mark.
The arguments of both parties have their respective strengths, and the parties want their brands to be legally protected.
Legal justice can be achieved with good faith without wanting to bring down each party’s business.
If you face such a case, we at Am Badar & Am Badar will be ready to provide quality services. In accordance with our tagline, “we listen, we evaluate, we progress.”
For quality services regarding IP, contact us at ambadar@ambadar.co.id
References:
rolex.com
ogannews.co.id