Recently, the well known watch brand Rolex issued trade mark infringement proceedings against a local children’s clock company in Devon called Oyster and Pop, demanding that they rebrand.
Rolex, which is valued at approximately 8.35 billion US dollars, has been accused of “bullying” behaviour by taking this step which has led to an online petition being launched with over 100,000 signatures to prevent Rolex from taking this action.
Rolex, who launched their Oyster Perpetual watches in 1950 have taken issue with Oyster and Pop who make children’s teaching wall clocks under the “Oyster and Pop” brand, due to the similarities of the use of the word “oyster” for watches.
The owners of Oyster and Pop hit back at Rolex publicly, claiming that the rebrand would “crush” their business, and that the name was chosen because the owners were born on a road called “Oyster Bend” in Devon.
This sparked a reaction amongst members of the public, with not only the petition, but with people suggesting Rolex’s budget would be better spent elsewhere, such as controlling and preventing counterfeit watches or on more pressing cases of trade mark infringement.
When enforcement goes too far?
Rolex taking this action led to national news headlines and adverse media attention, with Rolex being seen as a big company with a large budget suing a small family owned business.
Similarly, Condé Nast (one of the largest media companies in the world) who own Vogue, threatened to sue a family owned Cornish pub called “The Star Inn Vogue”. Condé Nast received negative media attention over this decision and the backlash led to Condé Nast apologising to the owners of the pub stating “from one Vogue to another – please accept our apologies.”
This serves as a reminder that sometimes taking enforcement action is a commercial decision that companies need to weigh up to try and strike the balance of protecting their brand and to avoid negative press and being seen as “bullying”.
Marks and Spencer were recently in the news with good publicity when they wrote a friendly letter which contained Percy Pig sweets to the owner of an ice cream parlour who had named an ice cream flavour “Percy Pig Ice Cream”. This approach was seen to benefit Marks and Spencer who were in a similar position of being a large brand taking enforcement against a small, family owned business (see our article on this here).
Netflix have previously made headlines with their funny viral cease and desist letter which they wrote to the owner of a Stranger Things bar. (“Stranger Things” is a trade mark of Netflix). This approach benefitted Netflix with good publicity and avoided the “bullying” allegations.
The takeaway message
In certain situations, a more creative and friendly approach is welcomed for trade mark infringement cases, to strike a balance between enforcing your trade marks and preventing negative media attention.
To find out more about how to protect or enforce trademarks, or for any advice if you are the recipient of enforcement communications, please get in touch with our specialist Trade Marks team.