A Rolex trademark victory came earlier this month when European officials partially blocked a Spanish company's application for the name "Vorlex" covering automotive goods and services. The European Union Intellectual Property Office ruled that consumers could see the mark on vehicles, car parts or related products and assume a connection to Rolex. The decision followed a recent "Lolex" case, in which Rolex successfully challenged the use of the name on certain pillows and home-furnishing products.
The cases are the latest examples of a brand spending resources not only on making watches but also on protecting its name after it has become widely recognized. In both, officials agreed the similarity of the names could allow applicants to benefit from Rolex's reputation despite having no connection to the watchmaker.
No other watch brand pursues trademark disputes as aggressively as Rolex. Unlike brands built around surnames or common words, Rolex's name gives it a strong basis to argue that similar-sounding trademarks seek to benefit from its reputation. In the Vorlex case, European officials said it was "very likely" that the applicant was attempting to take advantage of Rolex's reputation. Rolex also argued that associating its name with automotive products could tarnish the luxury image it has spent more than 100 years building. The company claimed that seeing "Vorlex" stamped on a car might lead shoppers considering a Rolex watch to "give it a second thought," the decision says.
In an interesting twist, European officials did not strike down the trademark entirely. The Spanish company can continue using "Vorlex" for five services, including retail services relating to accumulators and safes, unmanned food retail stores and certain wholesale activities.