A Marine-r’s Odyssey: Rolex vs. Franck Muller
Images reproduced and/or communicated with license from Getty Images
By Mark Teng, Executive Director (Profile) & Michael Yee, Incoming Trainee ‘23
This is a case review of Trade Mark Application for “MARINER” in Class 14 in the name of FMTM Distribution Ltd (“Franck Muller”) and Opposition thereto by Rolex S.A (“Rolex”), as reported in Rolex S.A. v FMTM Distribution Ltd [2020] SGIPOS 6
It is undisputed that Rolex is one of the biggest names, if not, the biggest name in the luxury watch industry. Founded in London in 1905, Rolex has built a respectable name for itself in the luxury watch industry, introducing notable designs such as the SUBMARINER which has been classed as a timeless time piece, almost like a Michael Jordan of watches.
Franck Muller on the other hand, is like Nike’s Lebron James shoe line; new, fashionable, and unique. Founded in 1991, Franck Muller burst into the industry with its beautiful numerical design unique to the brand. Although it sits in the shadow of Rolex’s rich history, its influence as a fashionable time piece in recent years is unrivalled.
In Franck Muller’s quest to innovate and stay in the game, it introduced the MARINER collection, a seafaring-designed collection of watches that led to the dispute that is before us today. Upon the application of the “MARINER” mark in respect of watches and other specific goods in Class 14, Rolex filed an opposition of the “MARINER” mark. Rolex alleged that the mark was confusingly similar to its earlier “SUBMARINER” mark which, unsurprisingly, was also in Class 14, in respect of horological instruments.
Rolex filed for an objection pursuant to, inter alia, Section 8(2)(b) of the Trade Marks Act, which prevents parties from registering trade marks that are confusingly similar to earlier trade marks. In determining whether this section applies, the IP Adjudicator was guided by the Court of Appeal decision in Staywell Hospitality Group Pty Ltd v Starwood Hotels & Resorts Worldwide, Inc (“Staywell”), adopting a “step-by-step” approach towards objections of a mark pursuant to Section 8(2)(b). The “step-by-step” approach consists of:
assessing whether the respective marks are similar;
assessing whether there is identity or similarity between the goods or services for which registration is sought and the goods or services for which the earlier trade mark is protected; and
assessing whether there exists a likelihood of confusion as a result of the marks-similarity and goods-similarity.
As the “step-by-step” name suggests, the first and second steps are threshold criteria which must each be satisfied before moving on to the third step of assessing the likelihood of confusion.
Through this approach, the IP Adjudicator found the opposition of Franck Muller’s “MARINER” mark in Singapore successful, consequently dismissing Franck Muller’s application to register the “MARINER” mark.
Amidst the myriad of submissions before the IP Adjudicator on how various legal principles ought to apply such as, amongst other things, the distinctiveness of the mark, this article will focus on the assessment of whether the “MARINER” and “SUBMARINER” marks were more similar than dissimilar in terms of aural, visual and conceptual similarity under the first step of the step-by-step approach in Staywell.
Aural Similarity
“Doesn’t it ring a bell?”
“I’ve heard that song before but I can’t remember its name!”
Sounds are inadvertently one of the strongest stimuli in triggering a person’s memory. When we hear something familiar, we often find ourselves recalling (or trying to recall) the origin in which we first heard it. A similar analysis is done when assessing aural similarity between trade marks. To that end, the Court of Appeal in Staywell was insightful in providing us some guidance.
There are two approaches that may be considered when assessing aural similarity:
to consider the dominant component of the marks, and
to undertake a quantitative assessment of whether the marks have more syllables in common than not.
As the IP Adjudicator found that neither “MARINER” nor “SUBMARINER” possessed a dominant component, the second approach was adopted.
Here, we see the Singaporean peculiarities take center stage in identifying whether the two marks were aurally more similar than dissimilar. According to the Oxford Advanced Learner’s Dictionary, the word “mariner” is pronounced “MARE-ee-ner” while the word “submariner” is pronounced “sub-MARE-ee-ner” or “SUB-muh-REE-ner”. However, with renowned local skyscrapers such as Marina Bay Sands, and GRCs like Marine Parade, Franck Muller themselves acknowledged that their “MARINER” mark might naturally be pronounced by the average Singaporean as “muh-REE-ner” and likewise, “submariner” as “SUB-muh-REE-ner”.
The IP Adjudicator noted that the average Singaporean would adopt the pronunciation “muh-REE-ner” for Franck Muller’s “MARINER” mark because of constant aural encounters with words like “marine” (Marine Parade) or “marina” (Marina Bay).
On a quantitative assessment, Rolex and Franck Muller’s marks shared three similar-sounding syllables with the prefix of “SUB” being the only difference. It is presumed that Franck Muller argued that the prefix “SUB” was the aural factor that distinguished its “MARINER” mark from Rolex’s “SUBMARINER” mark and hence, the grounds of opposition under Section 8(2)(b) of the Trade Marks Act should not succeed.
Be that as it may, it was decided in Doctor’s Associates Inc v Lim Eng Wah that the first syllable of a word, though the most important, should not be applied in a “blanket fashion”. Although Franck Muller’s argument may seem compelling, the IP Adjudicator nevertheless found that the prefix “SUB” did not displace the remaining shared syllables and found that the “MARINER” mark was aurally more similar than dissimilar to the “SUBMARINER” mark.
Visual Similarity
Visually, the IP Adjudicator was guided by the case of Ozone Community Corp v Advance Magazine Publishers Inc. In assessing visual similarity of word marks, there are three factors that must be considered:
the length of the marks;
the structure of the marks (ie, whether there are the same number of words); and
whether the same letters are used in the marks.
The IP Adjudicator found that Rolex’s “SUBMARINER” mark is ten-letters long and encompassed the entirety of Franck Muller’s seven-lettered long “MARINER” mark. With the shared common denominator, the three-lettered prefix “SUB” in Rolex’s mark was relatively small and insufficient to displace the visual similarity that the “MARINER” mark had with the “SUBMARINER” mark. This led to the inevitable conclusion that Franck Muller’s “MARINER” mark was more similar than dissimilar to Rolex’s “SUBMARINER” mark.
Conceptual Similarity
An analysis on the conceptual similarity of word marks involves uncovering the ideas that “lie behind and inform the understand of the mark as a whole”. Franck Muller argued that their “MARINER” mark portrayed a visual imagery of a sailor and sought to distinguish itself from Rolex’s “SUBMARINER” mark as a submarine or submarine crew. Such a distinction was not persuasive to the IP Adjudicator, who found that both Franck Muller and Rolex’s marks convey similar ideas of the sea or a sailor. Unsurprisingly, the IP Adjudicator found the two marks conceptually more similar than dissimilar.
Conclusion/Takeaways
In light of the assessment of the aural, visual and conceptual similarity between Franck Muller’s “MARINER” mark and Rolex’s “SUBMARINER” mark, it comes as no surprise that the IP Adjudicator found that the two marks were more similar than dissimilar. As one decides to apply to register a trade mark in Singapore, one cannot only consider the legal processes in doing so, as it is equally important to assess the aural, visual and conceptual similarities that your mark might have through the lens of an average Singaporean person. How an average Singaporean person perceives your mark plays a distinctive role in giving your mark a sense of value, especially if you intend to monetize your business with it.
At That.Legal LLC, we can help you advance your intellectual property interests through legal processes such as these. Drop us an e-mail at ask@that.legal to find out more. We are always happy to help. #LetsTalkAboutYourChallenge