Case Digest: 246 Corporation (Rolex Music Lounge) vs. Daway

G.R. No. 157216             November 20, 2003

246 CORPORATION, doing business under the name and style of ROLEX MUSIC LOUNGE

vs.

HON. REYNALDO B. DAWAY, in his capacity as Presiding Judge of Branch 90 of the Regional Trial Court of Quezon City, MONTRES ROLEX S.A. and ROLEX CENTRE PHIL. LIMITED

FACTS:

Respondents sued Petitioner for violation of the Trademark Law, contending that the use of the mark “Rolex” in “Rolex Music Lounge” by 246 Corporation was an infringement on the rights of respondents to the mark. Petitioner’s defense state that there could be no infringement since respondent and petitioner dealt with goods and services entirely different from one another, thus, confusion to consumers and injury to respondent would unlikely occur.

RULING:

The Court noted the veracity of the claim of petitioner that there is no infringement in the use of a ‘junior user of the registered mark on the entirely different goods as stated in Sec 123.1 (f) of RA 8293. The court however stressed the limitation of the provision such as when the mark used is one that is internationally well-known or is attributable to a well-known licensee or registrant of the said mark. So much so that the use of it by another would affect the reputation of the registrant or its products and/or services due to association by mark usage to junior user. The Court however held that before Sec 123.1 and its limitation are applied in the present case, the criteria to determine whether mark is well-known must first be proven to have been met. The Court said that for such to be established, a full-blown hearing on the merits must first be had. 

Categories: Case Digest: 246 Corporation (Rolex Music Lounge) vs. Daway, G.R. No. 157216, INTELLECTUAL PROPERTY LAW, Rolex