The “Perpetual” element of Rolex SA's trademark is not so distinct that it merits protection from “Perpétuel,” the name of a United Arab Emirates-based luxury watch boutique — that’s according to the ruling by the U.K. Intellectual Property Office.
From similar-sounding names to customized watches bearing its logo, Rolex has been on a war path against trademark dilution lately. These pages reported this year alone on Rolex’s fights against Artisans de Genève, Texas-based BeckerTime and even the greeting card company Hallmark. Rolex is still in a lawsuit against a Florida-based real-estate firm called “Roleks Group LLC.”
In its latest lawsuit, Rolex was trying to block Perpétuel from registering a trademark series in the U.K. But Rolex failed to prove that consumers could confuse “Perpétuel” with the watchmaker's “Oyster Perpetual” brand name.
In an interesting twist, Perpétuel countersued, trying to block Rolex from protecting its international “Perpetual” trademark in the U.K., but was unsuccessful, as well.