Trademark Case Brief – Rolex SA v Alex Jewellery Pvt Ltd

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Citation – 2009 (6) RAJ 489 (Del.)

Facts:The plaintiff (Rolex) is a company incorporated under the laws of Switzerland and is engaged in the business of manufacture and distribution of premium quality watches. The plaintiff is aggrieved by the action of the defendant (Alex) carrying on business at Mumbai of manufacturing, selling, distributing and trading in artificial jewellery under the mark ROLEX. The Plaintiff had also come across a website of defendant which was registered as www.rolexjewelleryhouse.com and it was brought to light with further investigation that defendant was indeed manufacturing artificial jewellery in the name of ROLEX which was in turn being retailed
The plaintiff (Rolex) claimed the following:
a) Adoption of the trademark ROLEX and the first registration thereof in Switzerland in 1908.
b) Use of that trademark for trading around the world
c) That in India also it is registered in class 14 relating to Horological and chronometric instruments
d) That the plaintiff on 24th April, 2001 also got ROLEX in Hindi registered in class 14 with respect, to chains, charms, diamond earrings, jewel cases, medallions, necklaces, ornaments etc.
e) Have used the trademark ROLEX in India since 1912 i.e., even prior to the registration thereof in 1949
f) It is the case of the plaintiff that ROLEX is a well known trade mark as defined under Article 6 of the Paris Convention to which India is a signatory
The defendant argues that law of limitation bars the suit. The defendant also claims protection under S. 34 and 29 (4)(c) of the Trademarks Act.

Issues:
1) Whether the plaintiff’s mark can be categorized as a well-known mark.
2) Whether S.34 and 29 (4) (c) can be used as a valid defense by the defendant

Rule:
§ Section 33 of the Trademarks Act presents the rule of acquiesce which states that the proprietor of an earlier mark cannot oppose the latter trademark or claim to be invalid where the proprietor of the first trademark has accepted the latter trademark without a protest for a continuous period of five years. Knowledge of the existing latter mark and the unwillingness to oppose is what accounts for acquiesce.
§ Section 34 being a non obstante clause protects the proprietor of marks who (1) holds the first use of the mark in trade in relation to the predecessor in his title or (2) used the mark before the first register of trademark in respect of the goods of his predecessor.
§ Section 29 (4)(c) of the said act protects well-known marks, meaning those whose reputation in India is prominent enough to cause unfair advantage to those who use it in trade, which could also cause detriment to the respect and distinctiveness of their own mark.

Analysis:
The court justifies in its holding that:
§ Section 34 cannot be used as a defense as the defendant could not prove continuous use of the mark since their claim in 1993.
§ For section 33 to apply, the defendant must have registered trademark Rolex in relation to artificial jeweller in 1993. As they had not, they cannot contend for the plaintiff to not follow through with the suit. While they were also unable to present the paperwork relating to the intent to trade until after registration which was in 2001.
§ The defendants must disprove that the plaintiff is well known mark in India, which does not have to be only in regards of jewellery.

Holding:
The Court held that “Rolex” was a well-known trademark since it has been registered in more than 140 districts and also has a reputation in India and therefore, the defendant was restrained under Section 29(4)(c) of the Trade Marks Act from using the trademark “Rolex” in any way and was ordered to take down the website as well. The goods of the plaintiff would cease to be a status symbol if it had continued, which would prove to be detrimental to the plaintiff.

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