|OUR CLIENT’S MARKS||OPPONENT’S REGISTERED MARK|
ABU DHABI – On 17 June 2017, we filed a trademark application on behalf of our client, Cinkciarz.pl Sp. z o.o., for “Conotoxia” in the U.A.E. in class 36. The application was assigned number 275169 and then published in the Official Gazette on 28 February 2018, subject to the opposition period of 30 days.
Mastercard Incorporated filed an opposition against our client’s application under the following basis:
- The similarity between the marks in terms of general and visual appearance;
- Both marks feature two interconnected circles, which constitute the main element of the brand;
- Prior registration of “MasterCard” worldwide including the U.A.E. in class 36;
- Our client filed its trademark in bad faith, and
- Allowing the registration of “Conotoxia” contradicts the Trademark Law in the U.A.E. and International Conventions, will mislead the public, and will confuse consumers about the origins of the services provided under this brand.
We submitted our counter-statement based on the following:
- Lack of alleged similarity between the two shapes;
- Although our client’s mark consists of two circles, such a general shape cannot be monopolised;
- The two circles in our client’s brand consist of a further general sign, i.e. the Dollar currency sign and the Euro currency sign;
- The main element of our client’s mark is the word “conotoxia”, and the client is seeking protection for the overall appearance of the design, not merely the circle design;
- Our client’s mark is easily distinguished due to the differentiation in pronunciation;
- Due to the above reasons, the alleged contradiction of the Trademark Law is not evident, and
- Our client uses its brand extensively in many worldwide events making it a well-known mark.
The Examiner accepted our argument and issued a decision to reject the opposition raised by Mastercard Incorporated and allowed the application for Conotoxia to register.
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