Written by Alexander Welham | January 31, 2023
Most people have a thing that they are just into, whether it’s bags (like my wife), shoes, trading cards, comics, any manner of collectables really. If you’re anything like me, you’ll have a thing for watches. I’ve had a fascination with them for a long time and still can’t walk down the high street without stopping to see what watches are on display and if there is anything I fancy whether the price is realistic or not.
As a result of this fascination, I have become well versed in watch brands and associated sub brands for example, Omega Seamaster, Hublot Big Bang and of course Rolex Oyster Perpetual. It is that last example which is the topic of this particular blog.
In 2021, two women called Sarah and Emma formed a small company called Oyster & Pop, a named inspired from the road where the founders grew up, Oyster Bend. They design and create colourful clocks together with books to help teach children how to tell the time and found quick success becoming a bestseller in both the UK and the USA. Looking to secure the brand, they decided they ought to register their trade mark which is when they caught the attention of watch behemoths Rolex.
Lawyers representing Rolex have demanded that Oyster & Pop change the company’s name and all its branding, including its logo and website, because they are concerned that the average consumer will assume Oyster & Pop clocks are associated with, or directly from Rolex.
Now, this is a little bemusing when we consider a few things, first, the clocks from Oyster & Pop look nothing like the watches that Rolex produce and that’s because they are not trying to look like Rolex. Second, the name Oyster & Pop, to my mind doesn’t evoke thoughts of Rolex in anyway, even considering that Rolex have had the trade mark for Oyster since 1926 (at least in the UK). Thirdly, the price, Oyster & Pop sell their clocks for around £20, Rolex sell watches that start around £7,000 and can reach prices well into six figures. They are targeting completely different consumers, someone who is in the market for a luxury Swiss watch is not going to confuse this children’s teaching clock as being from Rolex.
The question is really are all these points enough to get over the similarities in the respective brand names. Ordinarily, you would automatically say if the word Oyster is a registered mark for watches then this should prevent anyone else from using this word for anything to do with watches, whether they are clocks or other items used for telling the time. But it is perhaps due to the luxury nature of the Rolex brand that will prevent it from having success in its endeavours here. As above, if you are in the market for a Rolex or indeed any watch that is going to cost you several thousand pounds you are very likely going to take your time and do your research. Additionally, you are going to know that Rolex would never put out either a children’s learning aid or a timepiece of any nature for as little as £20. This is ultimately the point that Oyster & Pop make and it appears to have struck a chord with a petition set up by the small business to stop Rolex’s demands reaching over 80,000 signatories at the time of writing this blog.
If you have any trade questions or facing your own opposition, don’t hesitate to reach out to us. Briffa is always on hand to help with all things trade marks. We can be reached at email@example.com or on 0207 096 2779 for a free consultation.
Written by Alex Welham – Solicitor
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