Our client, Solen Cikolata Gida Sanayi Ve Ticaret Anonim Sirketi, a Turkish company, filed a design application for VIP in Jordan under no. 1687 in respect of food products packaging and containers under class 9, the application was published in the Official Gazette No. 426 on 5 October 2009 subject for a 3 months opposition period.
Mars Inc., filed an opposition against said design stating that it has invented, developed, and used the same drawings and designs many years ago on its products, claiming that the opposed design contains similar colours, lines, and fonts of several protected trademarks and Industrial drawings owned by Mars.
Mars opposition was based on:
- The distinctive packaging used by Mars through invented colours and shapes being the main elements to differentiate its products from others which lead to gaining international fame;
- The red, gold, and black colours make Mars products unique;
- Continuous use and world-wide registrations of Mars logo in various shapes including Jordan, and
- The defendant design is confusingly similar to Mars protected designs.
Our defense statement was based on the following:
- The general appearance of our client’s design is dissimilar with Mars design in terms of shape, packaging, and logo (trademarks);
- The VIP logo is different than Mars’ Logo;
- The lines, fonts, colours, and drawings are far from being similar;
- The claim stating that the shape used by Solen and Mars are similar and against the law is incorrect since the shapes at issue are general, are unprotectable, and are in the public domain, e.g., the designs used by Visa, Master Card, and others are similar in overall shape, and
- Notwithstanding Mars’ failure to assert colour as a claim against VIP, the red, gold, and black colours are commonly used by chocolate companies.
After reviewing the above, the Registrar of Industrial Drawings and Designs, found that our client’s design lost its novelty due to the similarity of plaintiff’s design, and accordingly issued its decision against our favour to cancel the application. This judgment was subject to appeal before the Supreme Court within 60 days.
We appealed the decision on 26 November 2013 before the Supreme Court, and after full litigation the court found that the industrial drawing related to our client as different from Mars Inc.’ design in shape, font, text, and pronunciation, therefore, the novelty was not destroyed and the design could be registered.
The said decision is final and cannot be repealed.
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