Established in 1875, Audemars Piguet is a well-known brand in the luxury watch market, particularly known for its classic Royal Oak range. Though well-known, the firm lately suffered with its Audemars Piguet trademark registration.
The Japan Patent Office (JPO) rejected Audemars Piguet’s trademark application for the unique shape of its Royal Oak watch due to a lack of distinctiveness. This decision affects the brand’s intellectual property protection strategy.
If you’re interested in trademark-related cases, we suggest reading more about this topic on Am Badar & Am Badar’s insights page.
Understanding Trademark Registration
Companies attempting brand and identity protection must first register a trademark. Names, logos, and symbols, part of trademarks, make a business stand out from its rivals.
A corporation acquires exclusive rights to use certain brand-defining words, phrases, symbols, or images through trademark registration.
So, getting trademark rights gives businesses exclusive access to a brand, therefore shielding it against unauthorized use or copying.
The Process of Trademark Registration
First, you must comprehend the trademark registration procedure to know why the Audemars Piguet trademark was refused. Typically, the procedure consists of several stages:
- Submitting a trademark application.
- Review by trademark offices.
- Publications and opportunities for opposition in cases of trademark infringements.
- If the application succeeds, the trademark gets registered and can be renewed indefinitely with fee payments.
Japan also has a specific process for trademark registration, regulated by the Trademark Act of 1959. Here’s an outline of the steps involved in registering a trademark in Japan:
- Initial application by submitting required forms, including a detailed trademark representation.
- The first publication by the Japan Patent Office (JPO) to allow the public to review pending trademarks.
- Two phases of the examination process.
- Based on the examination outcome, the JPO issues either a “Decision of Registration” or a “Notification of Reasons for Refusal.”
- Once approved, the trademark is registered, and a fee must be paid. The registration is then published in the Trademark Gazette.
- Third parties can oppose a registered trademark within a specific period.
- Japanese trademark rights have lasted 10 years and can be renewed for successive 10-year terms.
The Registration Failure of Audemars Piguet
Now, let’s explore why the Audemars Piguet trademark was not successful. In February 2020, Audemars Piguet Holding SA filed an application with the JPO for trademark protection of the ROYAL OAK design.
The application aimed to secure exclusivity for the watch’s distinctive shape in Japan, which has been marketed since 1972. However, in 2021, the JPO rejected the application for several reasons.
Reasons Behind the Failure
The JPO stated that the design failed to meet the criteria for inherent distinctiveness required by Japanese law. Here are more details of the reasons behind Audemars Piguet trademark failure:
1. Lack of Inherent Distinctiveness
In Japanese trademark law, shapes considered typical for a product type often fail to meet distinctiveness requirements unless they uniquely represent the brand.
The JPO noted that many other luxury watches include identical design features such as the bezel, screws, and basic case form, therefore rendering the ROYAL OAK as simply another luxury watch model available on the market.
2. Insufficient Evidence of Acquired Distinctiveness
Audemars Piguet turned in data showing annual sales over JPY 8 billion and significant advertising expenditure. The court decided, however, that this material lacked sufficient evidence proving consumers recognized the design by itself as reflecting the brand.
The court also noted that some of the ROYAL OAK line models, including the “Royal Oak Offshore” and “Royal Oak Concept”, lacked one or another identifying architectural element.
This made it challenging to claim that these design elements were mainly linked in consumers’ awareness of Audemars Piguet.
Emphasizing the octagonal bezel, hexagonal screws, and patisserie pattern of the design, the business challenged the JPO’s ruling in response to Audemars Piguet’s trademark rejection.
The firm claimed that acquired uniqueness could be established from the watch’s long-standing popularity and substantial marketing in Japan.
Unfortunately for Audemars Piguet, the IP High Court decided in March 2024 that the design stayed within the practical and aesthetic preferences usual for wristwatches, therefore rejecting the case.
Implications of the Trademark Failure
Failing trademark registration may have several major effects on a corporation, from influencing corporate identification to restricting future development possibilities and exposing the organization to probable trademark infringement proceedings.
From this Audemars Piguet trademark lawsuit, so, what lessons may we gain? Here we can see how a denied trademark may influence a brand in many ways:
Impact on Brand Identity
A brand’s identity is one of its most important assets, often embodied by trademarks like logos, symbols, or distinctive product forms. When a trademark application fails, it creates uncertainty about the exclusivity of these elements.
In Audemars Piguet’s case, although the brand argued their design features were unique, the Court ruled these features were standard among other watchmakers and not distinctive enough to justify trademark protection.
Without trademark protection, the unique elements of the product design could no longer be a protected asset, potentially weakening the brand’s association with the design.
Future of the Brand
A failing trademark may affect a business’s expansion, particularly in foreign countries. Well-known brands must establish individuality through trademarks to draw devoted customers worldwide.
The refusal from Japan’s IP High Court would limit the brand’s strategic growth in Japan, where a registered trademark may assist it in positioning itself against competitors.
Therefore, the trademark protects brand identification and enables enterprises to control how their brand and goods are seen and perceived, acting as a legal shield for those wishing to grow internationally.
Also, one of the most practical concerns with a failed trademark is the increased risk of trademark infringements. Registering a trademark gives the brand owner exclusive rights to use it, preventing others from confusing or weakening the brand’s image.
Audemars Piguet’s story shows that without trademark protection, it is difficult to prohibit other businesses from creating similar-looking goods, which could cause consumer uncertainty and loss of market share.
If your business is considering registering a trademark or has problems similar to those in the Audemars Piguet trademark case, Am Badar & Am Badar offers professional advice on the trademark process.
Our comprehensive Trademark Licence Service is aimed at preserving the unique character of your brand under protection. Visit our services page for more details about our business or get in touch personally for expert help.
Need more insights? Read further news about trademark issues from our article: “Success in Trademark Case for Battery Mark”.
