Jeweller's press release highlights need for quality control in brand licences

Though much trade mark protection is focused on combating counterfeits or businesses passing themselves off as the brand owner, sometimes action needs to be taken by a brand owner against a legitimate reseller of its products.

Brand owners can avoid circumstances that may require action against a reseller, and simplify their means of resolving any problems that do arise, through carefully-worded licensing agreements, the lawyer said.

A jeweller in the US, Melrose Jewellers, has attracted criticism for a press release in which it claimed that the wearing of a Rolex watch helped actor Owen Wilson to recover from a reported attempted suicide in 2007.

"After a frightening suicide attempt in 2007, Rolex watches appeared to play an essential role in actor Owen Wilson’s recovery," the press release said.

It continued: "After returning home from the hospital, Owen was captured by a photographer walking on the beach, wearing his Rolex Submariner. Later, he was seen riding his mountain bike in Santa Monica with the Rolex Submariner on his wrist. Obviously, the quality of a Rolex watch helped Owen realize and appreciate the quality of his own life."

"Wearing a Rolex Submariner and attending Rolex Benefits helped Owen Wilson realize his life was valuable and worth living. Once again, the precision and quality of a Rolex proves to be a lifesaver in more ways than one," it said.

The press release does not contain an explicit endorsement from Rolex or Wilson, and neither Rolex nor Melrose Jewellers were available for comment.

The release has been criticised for insensitivity, but whether or not Rolex could take any action depends on any specific licensing agreement it might have with Melrose Jewellers, said John Mackenzie, a litigation specialist with Pinsent Masons, the law firm behind OUT-LAW.COM.

"In most agreements licensing the use of trade marks you would expect to see something about quality control," he said. "There will usually be a clause saying a retailer is not allowed to be offensive or do something unlawful in relation to the trade mark. Some will even say they are not allowed to market using it at all without prior permission or beyond certain strict limits."

Mackenzie said that businesses should ensure that these clauses control other companies' use of trade marks. "If there are no restrictions on the use of a trade mark then an owner will be left with no cause for action just because they think someone's behaviour has damaged their brand or reputation," he said.

Pinsent Masons trade mark specialist Jude Tonner said that brand owners taking action against resellers was unusual but possible. She said that a trade mark holder's first reaction would be likely to be to ask that any offending published material is removed, and that they could then ask for damages.

"If they can show trade mark infringement then seeking damages would be an option for holders," she said.