|OUR CLIENT’S MARK||OPPONENT’S MARK|
ABU DHABI – Pursuant to the last hearing on 19 October 2021, before the Federal Court of Appeals (refer to our news article of October 2021), the Appeals Court agreed to the decision made by the Cassations Court.
This case goes back to 16 December 2018 when we filed a trademark application for the device mark “IJTI I. J. TOBACCO INDUSTRY” on behalf of our client I.J. Tobacco Industry FZE. Then Japan Tobacco filed an opposition against our client’s application based on alleged similarities with their registered trademark JTI.
The Oppositions Committee accepted our arguments and issued a favourable decision. The opponent then filed an appeal against said decision before the Grievance Committee, where it issued an adverse judgment against our client’s application.
In response, 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. The matter was then reviewed by the Court of Cassation where it issued a favourable decision and transferred the case back to the Court of Appeals to assign a new jury and to appoint a trademark expert to do the following:
- Establish whether a similarity between both marks really exists;
- Weigh the popularity of the challenged mark IJTI over JTI, and
- To finally determine whether the defendant (our client) has the prior use.
The new jury at the Court of Appeals, based on the expert’s report, ordered the following rulings:
- Cancellation of the judgement of the Court of the First Instance (which ruled against our client’s favour);
- Retracting the decision of the Grievance Committee, which initially decided to halt the IJTI registration process;
- Immediate registration of IJTI at the Trademark Office, and
- The opponent will be eligible to pay the administrative fees and expenses.
Accordingly, the IJTI trademark registration was granted. The final registration certificate was issued on 14 December 2021 under the serial number 303347 and is valid for ten (10) years from the date of the application (i.e., from 16 December 2018).
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