Rolex v EUIPO perfectly illustrates the cumulative requirements for a successful opposition or infringement action: similar signs, similar goods or services and, ultimately,an actual likelihood of confusion or harm to reputation.

The absence of any one of these pillars may be fatal. Rolex proved similarity of the signs, but could not overcome the obstacle created by dissimilar goods, namely watches versus clothing.

The standard is even higher when the reputation of the mark is invoked. You must prove the mark’s reputation on the relevant market, actual or likely harm such as dilution, tarnishment or unfair advantage, and a causal link.

IP practitioners know that preparing the evidence is often more important than the legal argument itself. Contracts, sales figures, market surveys and brand recognition studies can all become decisive in litigation.