Rolex SA v LG Display Co., Ltd

This matter concerned an opposition by Rolex SA to the registration of a trade mark by LG Display Co., Ltd. The dispute arose from LG Display's application to extend protection for its International Registration Designating Australia (IRDA) 1915045, which included goods in class 9. Rolex SA opposed the registration of certain goods within class 9, specifically "wrist mounted telecommunication machines and implements being watches," on the grounds that its own trade mark, "ROLEX," had acquired a reputation in Australia. The decision was made by Hearing Officer Bianca Irgang.

The primary legal issue before the Hearing Officer was whether the use of LG Display's proposed trade mark in relation to "wrist mounted telecommunication machines and implements being watches" was likely to deceive or cause confusion, by virtue of the reputation of Rolex SA's "ROLEX" trade mark in Australia, pursuant to section 60 of the relevant Act. A secondary, but related, issue was whether "smart watches" (as described in LG Display's application) were similar goods to "watches" (as specified in Rolex SA's existing registrations in class 14).

The Hearing Officer reasoned that to establish a ground of opposition under section 60, the opponent must demonstrate that another trade mark had acquired a reputation in Australia before the priority date of the mark sought to be registered, and that the use of the latter mark would likely deceive or cause confusion due to that reputation. While section 60 does not require substantial similarity between the trade marks or the goods, the Hearing Officer considered the similarity of goods. She found that smart watches are similar to traditional watches, as both are worn on the wrist, serve a time-telling function, and are considered fashionable accessories, acknowledging the growing market for smart watches and their dual functionality. Ultimately, the Hearing Officer was satisfied that Rolex SA had met the onus of proof for the section 60 ground of opposition in relation to the opposed goods.

Accordingly, the Hearing Officer directed that protection of IRDA 1915045 be extended in respect of the specific goods in class 9 that were opposed, namely "wrist mounted telecommunication machines and implements being watches." Costs were awarded against LG Display in favour of Rolex SA, as is usual when an opposition is successful.