246 Corporation v. Daway
G.R. No. 157216 November 20, 2003
Lessons Applicable: Jurisdiction of Trial court, special affirmative defences on infringement
Laws Applicable:
FACTS:
• Montres Rolex S.A. and Rolex Centre Phil., Limited, owners/proprietors of Rolex and Crown Device, filed against 246 Corporation the instant suit for trademark infringement and damages with prayer for the issuance of a restraining order or writ of preliminary injunctionbefore the RTC of QC
o July 1996: 246 adopted and , since then, has been using without authority the mark “Rolex” in its business name “Rolex Music Lounge” as well as in its newspaper advertisements as “Rolex Music Lounge, KTV, Disco & Party Club.”
• 246 answered special affirmative defences: no confusion would arise from the use by petitioner of the mark “Rolex” considering that its entertainment business is totally unrelated to the items catered by respondents such as watches, clocks, bracelets and parts thereof
• RTC: quashed the subpoena ad testificandum and denied petitioner’s motion for preliminary hearing on affirmative defenses with motion to dismiss
• CA: affirmed
ISSUE: W/N RTC performed a grave abuse of discretion
HELD: NO. petition denied. RTC affirmed
• The issue of whether or not a trademark infringement exists, is a question of fact that could best be determined by the trial court.
• Section 123.1(f) of the Intellectual Property Code (Republic Act No. 8293)
o (f) Is identical with, or confusingly similar to, or constitutes a translation of a mark considered well-known in accordance with the preceding paragraph, which is registered in the Philippines with respect to goods or services which are not similar to those with respect to which registration is applied for: Provided, That use of the mark in relation to those goods or services would indicate a connection between those goods or services, and the owner of the registered mark: Provided, further, That the interest of the owner of the registered mark are likely to be damaged by such use
• Section 123.1(f) is clearly in point because the Music Lounge of petitioner is entirely unrelated to respondents’ business involving watches, clocks, bracelets, etc. However, the Court cannot yet resolve the merits of the present controversy considering that the requisites for the application of Section 123.1(f), which constitute the kernel issue at bar, clearly require determination facts of which need to be resolved at the trial court. The existence or absence of these requisites should be addressed in a full blown hearing and not on a mere preliminary hearing. The respondent must be given ample opportunity to prove its claim, and the petitioner to debunk the same.
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