Rolex Prevailed in Trademark Opposition against “SOLEX”

In an opposition filed by Rolex S.A. (“Rolex”) against the contested trademark “SOLEX”, Taiwan’s IP Office (“TIPO”) ruled that the contested trademark should be cancelled due to likelihood of confusion with Rolex’s iconic brand “ROLEX” (Reg. No. 00020923, see below).

The contested trademark, “SOLEX & device” (Reg. No. 02317003, see below), was filed on January 25, 2022, and registered on September 1, 2023. The trademark covered products in Class 16, including painting, poster, printed matters, drawings, photographs, portrait, oil paintings, etc. Rolex filed an opposition on November 30, 2023, alleging that registration of the contested trademark violated Articles 30.1.10, 30.1.11, and 30.1.12 of Trademark Act.

TIPO sided with Rolex on February 26, 2026, finding the registration of the contested trademark violated Article 30.1.11 of Trademark Act:

1.        Article 30.1.11 of Trademark Act provides that a mark shall not be registered if such a mark is identical or similar to another’s well-known trademark, and hence may cause confusion among the relevant consumers, or may harm the distinctiveness or reputation of such well-known trademark. 

2.        Based on the sales records, market surveys, prior TIPO’s and Taiwan court’s decisions, news reports, and extensive advertisements on magazines including BMW Magazine, GQ, and VOGUE from 2019 to 2021, TIPO affirmed that prior to the filing date of the contested trademark, “ROLEX” had become well-known among the consumers in the field of watch products.  

3.        On similarity, while the first letter of “SOLEX” is different from that of “ROLEX”, TIPO considered such difference to be minor. Besides, both “SOLEX” and “ROLEX” consist of five letters, and end with the same letters “OLEX”. In the entirety, TIPO opined that consumers would find the contested trademark visually and phonetically similar to “ROLEX”.

4.        TIPO further noted that Rolex’s brand has established strong recognition among the relevant consumers, and is actually used on related printed products, including catalogues, calendars, and magazines. Therefore, consumers should be more familiar with Rolex’s “ROLEX” trademark, which warrants broader scope of exclusivity of product category.

5.        Considering the well-known status of “ROLEX”, the similarity between the two trademarks, the relatedness between the product categories, and the strong brand recognition of Rolex’s “ROLEX”, TIPO concluded that the registration of the contested trademark may cause confusion with Rolex’s well-known trademark. The contested trademark was cancelled accordingly.

 

Source: https://cloud.tipo.gov.tw/S282/S282WV1/#/written-result-details/disposition?issueKey=doNQI%2BOjAMkdpPuve8MOS0VwZBLbK%2BwolEtM