Close but no cigar, as 'Rolex' application is refused

In Montres Rolex SA v PT Permona (Case 951/80), the Court of Appeal has upheld a lower court's ruling, refusing the defendant's application to register 'Rolex' as a trademark for cigars. The appellate court agreed that the plaintiff's ROLEX mark is famous and that there was a real likelihood of consumer confusion, and this would lead to dilution of the mark

Montres Rolex SA, the Swiss manufacturer of the famous ROLEX brand of watches, owns a number of Iranian trademark registrations for ROLEX in relation to watches and clocks. It opposed the Indonesian company PT Permona's application for the registration of 'Rolex' as a mark for cigars. PT Permona argued that the mark would not confuse consumers, as the goods for which registration was sought (cigars) are not similar to those covered by Montres Rolex's trademark (watches and clocks).

At first instance, the court rejected PT Permona's claims and refused the trademark application. The court reasoned that (i) ROLEX is well known both nationally and internationally, and (ii) ordinary consumers would be confused as to the source of PT Permona's goods if they were sold under the mark.

PT Permona appealed but the Court of Appeal upheld the lower court's decision.

Mohammad Badamchi, HAMI Legal Services, Tehran

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