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.
