|OUR CLIENT’S MARKS||OPPONENT’S REGISTERED MARK|
MANAMA – On 2 April 2019, we filed a trademark application for the registration on behalf of our client, Eastea Chai Private Limited, for “Eastea” in Bahrain in class 30 over tea products. The application was assigned number 125778 and then published in the Official Gazette on 5 December 2019.
Societe des Produits Nestle S.A. filed an opposition against our client’s application on the following grounds:
- The similarity between our client’s mark and their registered trademark with International Registration number IR 1341950 in terms of appearance, pronunciation, and phonetic tone, especially, the usage of the letters “TEA”;
- The prior registration and extensive use of the brand NESTEA world-wide, including Bahrain;
- That they own different versions of the brand “nestea”, as well as a registration of the Arabic transliteration, and
- Allowing the registration of our client’s mark would confuse the public as to the origin of the products and contradicts Trademark Laws and international conventions.
In response, we submitted counter-arguments based on the following:
- Alleged Similarity
Our client’s trademark consists of two words, Eastern and Eastea, which makes it different from the opponent’s when it is read together.
The word Eastern refers to the origin of the product, i.e. the tea, while the word Eastea is a combination of two words, Eas and tea, where Eas is an abbreviation for Eastern. And the word “tea” is a generic term and no one can claim exclusive rights over such term.
Our client is the owner of several registrations for Eastern Eastea in several countries, as well as the brand Eastern which also serves as the company’s corporate logo.
Our client is an Indian manufacturer where the production of tea products is very popular due to the varieties of the types of tea that comes from that country, and their brand is well known in their home country and abroad, including Bahrain.
Therefore, when comparing the similarity between two marks, one should not look into the similar aspects separately, but rather looking at the elements of the design as a whole, and in our case, the entire look of our client’s mark is way different than the opponent’s.
The Registrar accepted our arguments and issued a favourable decision rejecting the opposition raised by Societe des Produits Nestle S.A. and ordered our client’s application to register.
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