| OUR CLIENT’S MARK | OPPONENT’S REGISTERED MARK |
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ABU DHABI – On 16 December 2018, we filed a trademark application on behalf of our client, I.J. Tobacco Industry FZE, for the mark IJTI- I. J. TOBACCO INDUSTRY in the UAE in class 34. The application was assigned Serial No. 303347 and was then published in the Official Gazette on 30 January 2019.
Japan Tobacco Inc. filed an opposition against our client’s application based on alleged similarities with their registered trademark JTI in class 34 in Yemen number 15031, arguing the following:
- The similarity between the marks;
- Possible confusion between the respective products;
- Prior registration of JTI by Japan Tobacco worldwide, including the UAE, and
- Allowing the registration of IJTI (our client’s mark) contradicts the Trademarks Law.
We submitted a counter statement based on the following:
- Lack of definite similarities between the marks;
- No evidence of confusion between both marks in terms of pronunciation or general appearance;
- Our client uses the brand IJTI in the UAE before the use of JTI by Japan Tobacco in the UAE;
- Our client uses its commercial name as their brand, therefore, the mark IJTI is protected as per the articles of the law;
- The letters IJ in our client’s mark stands for the initials of the founder of our client, where TI stands for Tobacco Industry;
- Worldwide registration of our client’s mark, and
- Our client’s mark, IJTI, has been accepted and registered in the opponent’s home country of Japan.
The Oppositions Committee accepted our arguments and issued a favourable decision by rejecting the opposition raised by the opponent. The opponent then filed an appeal against said decision, where the committee retracted its first decision and issued an adverse judgment against our client’s application.
We took the case to the Federal Court where the Court of First Instance reviewed the matter and ruled against us. We submitted an appeal before the Court of Appeals, where the case also received an unfavourable decision.
Finally, the matter was reviewed by the Court of Cassation where it issued a favourable decision and transferred the case back to the Court of Appeals to assign an expert to (i) establish whether the similarity between both marks really exists, (ii) the popularity of the challenged mark (IJTI) over JTI, and (iii) to finally determine whether the defendant (our client) enjoys the prior use privilege.
For more updates on the proceedings, please contact uae@qumsieh.com.