Home News Rolex wants to take a microbrand’s trademark

Rolex wants to take a microbrand’s trademark

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Kiger, a watch micro brand made by Mark Kiger is the David in a David vs Goliath battle with one of the biggest Swiss watch brands you know: Rolex.

Why would Rolex pick on a small-time watch guy with just one watch model for sale? Because they want his trademark.

Kiger has made just one watch model, with a few different variations in case and dial. All have carried a name that Kiger trademarked years ago, in 2014: Milsub.

The Kiger Dial, mk2

‘Waitaminute,’ you say, ‘how could that be?’
That’s because you -think- you know where the word ‘milsub’ comes from.

First, let’s go on a ridiculously long diversion on the history of wristwatches and the military branches.

Chronology

1938 and Officine Panerai

In 1935, Panerai was awarded the contract to make dive watches for the Italian Navy. They partnered with Rolex to produce the watches. Movements, cases, and crowns were all made by Rolex for Panerai, for the Italian Navy. Rolex continued to provide watches until the 1950s, with Panerai making dials and modifications to the cases to satisfy the Navy requirements.

This watch was made for the Italian Navy, is a military submersible, but not referred to as a ‘milsub’.

1957 and the A/6538

Post-war is where things get interesting. In England, Rolex made a few watches for the Ministry of Defense, called A/6538. These are a variant of the submariner, but were made in low numbers, about 21-40 pieces, and have very few examples that survive today.

The A/6538 had a tall bezel that tapered dramatically to the case in order to clear its big crown. The dial is called a prototype dial, and has the 3-6-9 dial commonly associated with an Explorer. The spring bars are fixed in the case, not removable. It was made in 1957.

The A/6538 is not colloquially called a “milsub”. Sometimes, it gets called the ‘milsub before the milsub’.

USA 1959, 1961

“The Rolex watch is found to be not sufficiently waterproof, bearing out reports from the field and is recommended for deletion from the Navy’s approved list.”

Project NS 186-200 Subtask 4, Test 43, 15 July, 1958

The US Navy issued a specification called MIL-22176A (SHIPS) MILITARY SPECIFICATION: WATCH, WRIST, SUBMERSIBLE (400-FOOT), NON-MAGNETIC (24 MAR 1961).

The specification was first issued in 1959, although I am only able to locate the 1961 revision. It’s from this document title that the name “Milsub” may have originated: Military Specification, watch, wrist, submersible. Mil…sub.

the specification dictated the Tornek-Rayville dial

The specification was given to the US watch companies, Elgin, Hamilton and Waltham. The Navy RFQ specified 1000 watches, and the companies didn’t think they could make a profit on such a small quantity.
Allen Tornek was the importer for Swiss watch company Rayville. Rayville made watches with the Blancpain name.

For Tornek, 1000 watches was a large number. Rayville already made the Blancpain Fifty Fathoms.

The Navy tested Enicar, Rolex, and Blancpain. Project NS 186-200 Subtask 4, Test 43, 15 July, 1958 is the report of the test results. Only Blancpain passed all requirements.

The big idea was to use Blancpain until an American-made Bulova could be ready. Bulova got as far as making prototypes for the Navy, but they failed to meet the spec. Two of the Bulova watches tested had bezels fell off, and a third watch stopped working.

From the test report, “The Rolex watch is found to be not sufficiently waterproof, bearing out reports from the field and is recommended for deletion from the Navy’s approved list.”

In the report, the crystal fogged over almost immediately, the coarse coin-edge bezel was found to be difficult to turn with wet hands or gloves, and the bezel jammed with mud or silt, and was unable to be turned.

By Allen Tornek convincing Rayville to put Tornek-Rayville on the dial, and selling through Tornek, the Navy was able to purchase watches from an American company, and fulfill the Military Submersible requirements with a Swiss-powered watch.

The Navy Explosive Ordnance Divers were issued Tornek-Rayville Fifty-Fathoms in 1964, at a cost of $55 USD per watch. (The Rolex was $95, and not American.) Less than 30 examples survive today.

Rayville likely had hoped to keep orders going, but as the Vietnam war was beginning to ramp up, by 1968, no additional orders were placed.

The Tornek-Rayville can be considered to be the first “milsub”.

UK, 1971

Over in the UK, the Ministry of Defense issued MOD DEF STAN 66-4 Part 1, Issue 2 in 1971, which superseded 66-4 Part 1, Issue 1 made in August 1968.

The specification, in broad strokes, attempts to do similar things as the US spec: make requirements about water-tightness, hacking seconds, dial colors, hand shapes, and so on.

This is the specification that lays out that watches shall have sword hands and fixed spring bars.

The MoD had two suppliers at this time; Omega, and Rolex. Like the US specification, a complete elapsed time scale (all the minute marks) was required for the bezel.

The MoD ordered its first batch of these watches from Omega in 1967. They were engraved “0552” on the case backs to designate them as property of the Royal Navy. These watches were delivered until 1971.

Omega SM300 milsub

These Omega watches are commonly called “milsub” by watch enthusiasts.

“a pair of W10 Omega SM300 milsub”
From Omegaforums.net, “Omega SM300 milsub on the bay”

In the 1970s, the MoD placed orders from Rolex. The Rolex was required to use the same elapsed time bezel, same sword hands, and fixed bars, in line with the specification. This gave the Rolex a similar appearance to the Omega that preceded them.

The Rolex 5513 was delivered to the Royal Navy with fixed bars, complete elapsed time scale, sword hands, and the requisite circle-T dial for tritium lume. This was a modified version of the consumer 5513, for military use.

Rolex 5517 milsub

In 1977, Rolex delivered their first watch that was made exclusively for the military, the 5517. Instead of making all new casebacks for the 5517, Rolex used 5513-marked casebacks for some of the 5517 production. There were only about 1200 units produced, and perhaps 180 survive.

These watches are the Rolex ones that are colloquially called ‘milsub’ watches.

The Quartz Years

The 5517 orders must have been short-lived. In 1980, MoD issued 66-4 part 4 issue 4, which superseded the previous versions, and called for a quartz dive watch. Those orders were fulfilled by CWC, Precista, and Pulsar, with CWC for divers, and Pulsar used by the RAF.

The CWC watches are also commonly called ‘milsub’ watches.

Kiger

In 2010, Mark Kiger started, like many micro brands, thinking about making a wristwatch. Kiger’s thing has been to make dive watches with a memento mori, the reminder of the finality of life. This is fitting for a dive watch, where diving is not without risk.

In 2010, Kiger searched the trademark database at the US Patent and Trademark Office, and found that the term ‘Milsub’ was not registered.

Branding and logos are one of the challenges of making a brand. In 2011, he designed the Kiger logo.

Kiger applied for the “Milsub” trademark on May 8, 2014, and was granted it on May 12, 2015.

He published a picture of the watch with that term on its dial on October 3, 2013, on the popular watch forum, watchuseek.com. This was a prototype version, made in a Kemner case. We’ll call this mk1 for the purposes of this article.

The first public image of Kiger Milsub, Oct 3, 2013, 7:22pm

That prototype would turn out to take a long time to make it to production. In order to speed up production, Kiger partnered with another supplier. We’ll call this mk2.

To give a sense of the timeline, the dial for that supplier was designed in December 2013, watches were received May 1, 2014, and published May 4, 2014. The first publication of the Kiger Milsub facebook page was May 10, 2014. Watches shipped to customers November 1, 2014.

To be really clear: the Mk2 design shipped to customers before the Mk1 version. Remember, it was published October 3, 2013. Watches were received July 2015, and shipped to customers starting August 2015.

The Kiger Milsub mk1

The watch has been available in one form or another, continuously since that time.

The latest release uses an 11.5mm thin dive watch case with a KIGER MILSUB dial, signed crown and caseback. The signed KIGER crown is lumed.

Kiger Milsub mk3

The work for this release began October 2018. They were manufactured between February and March 2019, and they were announced and shipped to customers December 12, 2019.

What is all this about? What is Rolex doing?

What’s interesting, and I told you about at the beginning of this article is, Rolex wants Kiger’s “Milsub” trademark.

On April 30, 2019, Rolex applied to the USPTO for the “Milsub” trademark; the trademark that Kiger already owns.

When viewing Kiger’s trademark, the status says, “Status: Live/Registered, A cancellation proceeding is pending at the Trademark Trial and Appeal Board.”

Rolex is trying to cancel Kiger’s mark. He was granted that mark fair and square. Rolex has never marketed a watch as a Milsub in its history.

Rolex contends that the term only applies to their watches, and is an amalgamation of “Military Submariner”. This may be the colloquial use today among Rolex fans. That doesn’t make it the only use, or make it enough for Rolex to take the term.

Another point of view is, the term stems from the US Military watch, wrist submersible document, and is an amalgamation of “military submersible” from that document.

The US Navy also refers to a “Submersible Wrist Watch” in their US Navy Diving Manual, SS521-AG-PRO-010 Revision 7 as a part of pre-dive procedures.

Rolex contends Kiger hasn’t been using the mark. The timeline shows that he has. One of the things about trademark law is that you need to use it for it to remain intact: Kiger’s been using it continuously since he was granted the mark.

When do trademarks expire? Couldn’t Rolex wait for Kiger’s mark to expire? No. Trademark registrations are valid for 10 years, and can be renewed every 10 years for as long as the mark is in use.

That’s two important details: it hasn’t been 10 years, and Kiger’s still using the mark. The mark doesn’t resemble any of Rolex’s marks, and isn’t trading on Rolex’s marks.

A third important detail about trademarks is ‘genericide’, where a mark becomes so common as to refer to any product (for example, every tissue becomes a ‘Kleenex’, every soda, a ‘Coke’), so that the term is no longer able to be trademarked, and open for all to use. That’s a possibility here.

  • Rolex hasn’t ever used the ‘Milsub’ term themselves.
  • Rolex hasn’t made a watch for the military since the late 1970s.
  • Rolex never even sold the watches to the public they claim ‘milsub’ refers to.
  • If they had any interest in the trademark, why didn’t they register it back in the late 70s when they were making the watch they claim the term is named for?
  • Why did Rolex wait until 5 years after Kiger had registered the mark and been shipping watches to customers?
  • If anything, why isn’t it Rolex who came late, whose use will cause confusion for the customer?

Why does Rolex want to take the mark away from Kiger? I don’t know for sure, but I strongly suspect that Rolex would like to make a Tudor watch with sword hands and a complete elapsed time scale. Maybe they’d even use fixed strap bars.

I suspect that Rolex only attempted to register the mark in 2019 after they had already made plans to make such a Tudor Heritage model, and realized the mark wasn’t available for their use.

Interestingly, Rolex have made no such attempts to register the mark in other countries around the world, only the US where Kiger owns the mark.

Rolex doesn’t make vintage-inspired watches, but they do leave that to their sister brand Tudor, and call them Heritage watches. I suspect Rolex wants to claim that only the 5513/5517 is a “Milsub” and that Kiger was granted the mark erroneously.

What is a milsub?

Rolex would be incorrect. A ‘milsub’ is a watch that was designed for military spec as a submersible watch, or looks like one that meets the specification.

The Tornek-Rayville was a ‘milsub’, as was the Omega used by the British a military submersible watch. Rolex had to modify their watch to look like an Omega, their competition, in order to comply with the British MoD requirements to be milsub dive watch. After the 5517 was no longer purchased by the UK MoD, the CWC has also been called a ‘milsub’ watch. The term has become genericized to refer to a watch that complies with military standards for a dive watch.

Rolex fans have blessed and/or cursed Rolex watches with a number of colloquial nicknames. Green Submariners are called the “Hulk”, or “Kermit”. The BLNR GMT Master II gets called the “Batman” and “Batgirl” depending on whether it’s on an oyster or jubilee bracelet, stupid gendering of the bracelets notwithstanding. The GMT Master has been called ‘Pepsi’ and ‘Coke’, depending on whether it’s equipped with the blue-red or black-red bezel insert. Should Rolex own these nicknames, too? No, Pepsi, Coca-Cola, Disney (Marvel, the Muppets), and Warner Bros. (DC) would all have legitimate arguments opposing. They own and use their respective marks, just as Kiger owns and uses ‘milsub’.

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16 COMMENTS

  1. This is an excellent article Victor. I would hope that Kiger is aware of this article and use it in their defence against Rolex. I hope Kiger wins this fight. I should add that this makes Rolex look like bad – like a bully. But I suspect they don’t care what we think of them.

    • More BS from a crappy watch company!
      I have removed myself from this brands list.
      A company like this should have a marketing and creative division that can come up with it’s own brand name’s.

  2. Kiger is clearly in the right here, per US trademark law. But honestly I think the law should not allow the trademarking of common terms. Kiger certainly did not come up with “milsub”, it has been used as described for decades by watch enthusiasts.

    Ditto the dude who trademarked “nato” for watchbands. That has caused no end of trouble.

  3. I dabbled with a little trademark law for a client and sold brandable domain names so I did some research. I wonder if Kriger filed an intent to use or actual trademark application. I think he should have done the intent to use since he wasn’t actually using it. It’s an interesting legal question if that would be curable.

    Regardless. Rolex should have offered a reasonable settlement since he’s got a tenable claim.

    • The record of filings at USPTO show that Kiger has satisfied all the requirements for using it. He used and is continuing to use the mark, and the filings reflect that.

  4. Interesting and well written article! I enjoyed learning the military history of one of my favorite types of watches.

    I think you may have nullified your own argument. By stating that the term “milsub” had already been genericized, you thereby infer that Kiger didn’t have the right to trademark it. Perhaps, it’s not so much that Rolex wants to steal the trademark as it is that they want to use the word and don’t want to get into a legal battle over a generic term. Maybe that’s why they’re only taking action in the US.

    • Rolex is filing to cancel Kiger’s mark and register milsub as their own. They do not wish it to be a generic term.

  5. “milsub” cannot be generalized because not enough people use it. It is not used as a general term for dive watch. Kinger is right. In their shoes, I would have registered the brand worldwide as soon as possible. There is even a possibility to lease this trademark on non-exclusive basis, if Rolex wants it so much 🙂

  6. Great article/content. I’m better informed, thank you! Is it possible Rolex is lining up for a future watch that will have “MilSub” on the dial or case? Remember it wasn’t too long ago that they sued/won against that company in Los Angeles that was selling their watches with repainted bright colored dials? Then, after Rolex won, in 2020 they came out with the wide array of colors for the new OP? I wonder if this is what’s going on here…

  7. “This continued, and while Panerai began using less expensive Angelus movements, Rolex continued to provide the case and crown until the 1950s.”

    This is inaccurate. Rolex made all references distributed by Panerai to the Italian Navy between 1935 and 1955. After that, Panerai started modifying Ref. 6152/1, first by adding the famous crown-protecting device and later by replacing the Rolex 618 calibers with Angelus 240 movements. Rolex never provided just cases, movements and crowns to Panerai, Rolex always provided complete watches. As a matter of fact, they were Rolex Oyster watches.

  8. One more thing, maybe you should show a proper 3646 and not the Franken watch depicted above. That watch was pieced together with parts from different time periods. The dial, for instance, is from the late 1950s and not as claimed from the late 1930s. Thank you.

  9. The article is not a journalistic masterpiece per se. It’s a biased defense for Kiger. And as far as I can see not taken into account of what’s happening here.

    In my opinion that Microbrand is using the term Milsub (and the optical details of the watch) in a parasitic way gain market share. I did a google research on my own (going incognito etc, the usual techniques) and found a 100% relationship of the term Milsub to Rolex. Digging deeper into it, the look, the overall appearance of this watch is clearly designed after the historic piece of the Rolex submariner.

    Whoever has the audacity to defend this Kiger watch, take a picture of a Rolex (5512 , 5513 / 5517) and this Kiger “Milsub” and compare those to the historic watches of Omega Seamaster 300 or Blancpain Fifthy Fathoms. The Kiger is clearly designed after the Rolex. Omega and Blancpain showed in the past how to comply to such a spec without copying another brand.

    What’s debatable is of course, if the term “Milsub” is generic or not. If it is, nobody should have the right to keep it. If it is related to one brand (like I’ve shown) it’s fairly a no brainer. If Rolex wouldn’t defend it’s brand, then it would be chopped of, little by little.

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