In Montres Rolex SA v PT Permona the court ruled that the trademark ROLEX is a famous mark.

Montres Rolex opposed an application for registration of the trademark ROLEX for cigars and other goods in Class 34. The opposition was based on the prior registrations of the trademark ROLEX in Class 14 under numbers 2692/3768, 19453 and 59598 for watches and clocks in Iran.

Indonesian company Permona argued that the registration would not confuse consumers, as the goods in Class 34 for which registration was sought were not similar to those covered by the ROLEX trademark in Class 14.

The court rejected the defendant's claims and ordered the cancellation of the trademark application. The court's ruling was based on the fact that the ROLEX trademark has won a national and international reputation over the years. The court also held that ordinary consumers would be confused as to the source of the cigars and other goods produced by the defendant if they were sold under the ROLEX name.

The decision was upheld by the Court of Appeal.

For further information on this topic please contact Mohammad Badamchi at HAMI Legal Services Inc by telephone (+98 21 204 36 84) or by fax (+98 21 204 36 86) or by email ([email protected]).