United Brothers Co., a Palestinian company, filed on 29 June 2009 a trademark application for “ZAHI (in Latin and Arabic letters)” in class 30 under no. 16371. The application was published on 26 April 2010.
Acting on behalf of our client, ZOUHAIR KATRANJI & SONS CO. (ZAHI FOR INDUSTRY & TRADE), a Syrian company, and the real owner of the trademark “ZAHI”, we filed an opposition against the above application based on the following:
- Earlier registrations by our client for ZAHI in class 30 in their home country and abroad since the 1990s.
- Prior use of the said mark in their home country and abroad by our client.
- The trademark ZAHI has become a famous and well-known trademark due to the above reasons.
- The infringing application is identical to our client’s trademark, and will lead to confusing the consumers as to the origins of the products bearing that mark.
The defendant submitted a counter statement claiming that the opposition was submitted after the expiration of the opposition period, and their reply also stated that they have the right of ownership of the subject trademark, since they have a prior application for registration in the West Bank, despite the fact that the opposer had prior registrations in many countries around the world. They requested a rejection of our opposition and to carry on with their registration procedures.
After reviewing the file, the opposition, and the reply, the Trademark Registrar issued his decision to stop the registration procedures of the opposed trademark, and he supported this verdict by the following:
- The opposition was submitted during the legal opposition period for that mark.
- The Syrian company submitted evidence that they own the trademark since 1992 (in their home country and worldwide), and that date is before the date of submitting the opposed application.
- The defendant did not submit any evidence to prove their prior ownership of “ZAHI”.
- A trademark being accepted and published in the Official Gazette does not grant ownership of that trademark according to the law.
United Brothers Co. appealed before the High Court. After several hearings, the court issued its decree to support the Registrar’s decision to stop the trademark registration procedure, and this decision cannot be appealed further.
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