OUR CLIENT’S MARKS	OPPONENT’S REGISTERED MARK

DAMASCUS – On 4 April 2019, we filed a trademark application on behalf of our client, Finansconsult Eood, for THE KING in class 34, which was assigned the serial number 2129.

The Examiner issued a decision to refuse our application due to its similarity with the registered trademark KING number 122438 in class 34 under the name of N.V. SUMATRA TOBACCO.

We filed an appeal to the said decision supported by a cancellation action against the cited mark based on the following:

• The owner of KING number 122438 has not been using the trademark since its filing date i.e. for more than 3 years, which makes the registration eligible for cancellation;
• Our client has prior worldwide registrations of their brand THE KING in class 34;
• Our client’s mark is widely used in Syria, neighbouring countries, and worldwide;
• Our client is seeking protection for its brand due to its popularity, and
• Due to the above, our client’s brand, THS KING, has become a well-known mark.

The Examiner, considering the facts raised in our argument and the evidence in hand, issued its decision to cancel the registration of KING number 122438 and allow our application to publish in the Official Gazette.

For more information, please contact syria@qumsieh.com.

OUR CLIENT’S MARK	OPPONENT’S REGISTERED MARK

ALGIERS – Our client, Oilon International Oy, is the legal owner of the registered trademark OILON in class 11 in Algeria and worldwide.

It came to our client’s attention that a Chinese trader, Ningbo Oulin Kitchen Utensils Co. Ltd., had registered a trademark application for OULiN under number 080940 in class 11 and 25 in Algeria.

On behalf of our client, we filed a cancellation action against said trademark based on the following:

• Similarity between the marks in terms of pronunciation, general appearance, and comparison between the list of goods;
• Prior use and registration of OILON by our client in Algeria and worldwide, and
• Evidence of bad faith in registering a prior similar trademark.

After fully litigating that matter, the Court issued a decision to cancel the OULiN trademark registration No. 080940 in the name of the Ningbo Oulin Kitchen Utensils Co. Ltd. from the trademark Registry.

If you have any question or need assistance, please contact us at algeria@qumsieh.com.

OUR CLIENT’S MARK	OPPONENT’S REGISTERED MARK

AMMAN – Our client, Polikim Kimya Ve Plastik Sanayi Ticaret Limited Sirketi, is the legal owner of the registered trademark ICM POLITEK in classes 1, 2, 17, and 35 in Turkey and worldwide including Jordan since 2003.

It came to our attention that a similar trademark to POLITEK was registered in Jordan in class 1 under number 146065 for overlapping goods to those of our client.

On behalf of our client, we filed a cancellation action against said trademark based on the following:

• Similarity between the marks in terms of pronunciation, general appearance, and comparison between the list of goods;
• Our client is the true owner for the trademark ICM POLITEK since 2003, in Turkey, Jordan and worldwide;
• Prior use for POLITEK by our client since 2009, and
• Evidence of bad-faith in registering a prior similar trademark.

We have also provided evidence of prior registration and prior use in different territories to support our arguments, such as registration certificates, sales invoices, customs declarations, and advertising materials.

The Trademark Office considered our statement and issued a decision in favour of our client, and removed the subject trademark number 146065 from the registry.

If you have any questions, please contact jordan@qumsieh.com.

Our client, UGUR SOGUTMA MAKINALARI TEKSTIL SERIGRAFI BASKI MADEN VE MERMER SANAYI VE TICARET ANONIM SIRKETI, a Turkish company is the owner of the registered trademark UGUR in Class 11 in the home country and worldwide since 1992.

It came to our client’s attention that its previous distributor in Saudi Arabia, Mohammad Imad Eddin Waheeb Al Byriqdar, had registered the same trademark under number 50/1056 in class 11 in Saudi Arabia.

Acting on behalf of our client, we filed a cancellation action in the Board of Grievance against said registration based on bad faith.

Our argument stressed that there was a clear intention of bad faith by the defendant, demonstrated by the fact that he was the commercial distributor of our client in Saudi Arabia.

We supported our argument by submitting the following evidences:

• Copy of sales invoices in the name of the infringer, and
• Copy of the correspondences between our client and the defendant.

After several hearings, the Board of Grievance in Saudi Arabia issued its decision to our favor by removing the infringing trademark from the register. The counterparty did not file an appeal against the decision, therefore the decision became final.

For more information, you can contact saudi-arabia@qumsieh.com.

Our client, AL Jazeera Paints Manufacturing Company, is the registered owner of the trademark AL-JAZEERA PAINTS in Latin and Arabic characters in Jordan in class 2.

An ex-employee of our client filed a trademark application for AL-JAZEERA PAINTS in Jordan and have a registration certificate since 17 December 1996 in class 2 under number 41121.

A cancellation action can be submitted within five (5) years from the date of registration, but we filed a cancellation action on behalf of our client long after the five year period ended, so we based our argument on the infringer’s bad faith based on Paris Convention per the following:

• Our client’s mark is famous;
• The infringing trademark is confusingly similar to our client’s mark in terms of pronunciation, general appearance, and designated goods, and
• The registration of the alleged mark has harmed our client’s rights, as it was registered in bad faith.

We submitted evidences that “Al-Jazeera Paints” is well known amongst the target market and dealers who work in this field, and the Registrar decided to cancel the registration of the alleged trademark. This is a precedential decision in Jordan considering.

If you need more information about our practice in Jordan, please contact us at jordan@qumsieh.com.

A local company trading under the name of Mr. Fuad Taha Ahmed Katen (FUAD) has registered ULKER BISKREM in Djibouti under No. 438/2012 on 5 December 2012 in class 30. The trademark registration was published in the daily newspaper “La Nation” No. 243 on 9 June 2011 subject to cancellation within 5 years from the publication date since there is no opposition stage.

Acting on behalf of our client, Yildiz Holding Anonim Sirketi (YILDIZ), a Turkish company, we filed a cancellation action before the Commercial Court against the above registration based on the following facts.

Prior registrations of ULKER BISKREM as word mark and in various designs by the plaintiff in the home country, as well as prior registrations of the word mark ULKER BISKREM in Czech Republic, Germany, Pakistan, Slovak Republic, Yemen, CTM, Kazakhstan, OAPI, Romania, Ukraine, Kosovo, Montenegro, Macedonia, Republic of Serbia, Turkey, Trinidad, Algeria, Albania, Bulgaria, Jordan, Lebanon, Iraq, Morocco, Russia and others.

Prior uses of the subject mark by the plaintiff YILDIZ in the home country, Djibouti, and abroad are evident.

The defendant was buying and distributing the plaintiff’s products bearing the said mark in Djibouti, Ethiopia, Somalia, and Eritrea for the past seven (7) years, so his opposed mark were registered in bad faith.

After full prosecution, the Court has ruled to cancel the trademark “ULKER BISKREM” registration No. 438/2012 in the name of the FUAD from the trademark Registry, ordered reimbursement to our client for the damages in the amount of DJF500,000 (US$2795.34).

Since the decision was not appealed within 6 months from notification date, it has become final.

If you have any question or need assistance, please contact us at djibouti@qumsieh.com.

A local company operating under the name of Jamil Hassan Al Sibaii (Yldiz Mersin Establishment for Industry & Trade) has registered PENYE MOOD and device in color under No. 134311 on 16 March 2011 in class 25 in respect of clothing, lingerie and footwear. The trademark registration was published in the Official Gazette No. 27 page 4134 on 9 June 2011 subject to cancellation within 5 years from the publication date.

In essence, under the Lebanese filing system, any mark that complies with the formalities will be accepted, registered, and then published in the Official Gazette; thus there is no opposition stage.

Acting on behalf of our client, TRENDY GIYIM SANAYI VE TICARET LIMITED SIRKETI, a Turkish company, we filed a cancellation action against the above registration and supported our case by filing a trademark application for PENYE MOOD and Device in color.

Additionally, we sent a warning letter to the defendant requesting him to withdraw its PENYE MOOD registration, but the defendant refused. Therefore, we initiated a legal proceeding based on the following:

• The defendant registered the subject mark in bad faith with prior knowledge that the mark was created, used, and owned by our client since the defendant entered in business negotiations with our client before registering the mark under defendant’s name. Also the defendant had commercial dealings with the plaintiff in 2011, before the registration of the infringing mark under his name and making the defendant aware that it is owned by the plaintiff, and
• The plaintiff owns prior registrations of PENYE MOOD in classes 3, 23, 24m and 25 in many countries including Lebanon, Algeria, Saudi Arabia, WIPO, and others.

After full prosecution, the First Instant Court has ruled as follows:

• Cancelled the trademark “PENYE MOOD with Device” in class (25) No. 134311 in the name of the defendant “Gameel Hassan Sbaai” from the trademarks Registry;
• Confiscated and destroyed the defendant’s products bearing the trademark “PENYE MOOD with Device”;
• Prohibited the defendant’s future use of the trademark “PENYE MOOD with Device”;
• Ordered reimbursement to our client for the damages with the amount of LBP 10M (equivalent to €4850);
• The judgment to be published in 2 daily newspapers Al Nahar and Al- Belad, and
• All expenses are to be paid by the defendant.

Since the decision was not appealed within 30 days from notification date, it has become final.

If you have any question, please contact us at lebanon@qumsieh.com.

On 23 March 2011, Caterpillar Inc., has filed a cancellation action before the Registrar against the said registration based on the following points:

• Confusing similarity between Cat Wax in Latin & Arabic characters and the trademark CAT Caterpillar;
• The registration of said mark is against the law since it misleads the public and confuses the consumer of its origin and results in unfair competition;
• The plaintiff has the prior identical/similar registration for the same class and list of goods, and
• The opposed trademark cannot be registered because it is identical and consists of the identical translation of the famous mark (CAT Caterpillar), which will eventually confuse consumers, mislead the public, and damage the plaintiff’s interests.

We submitted our counterstatement based on:

• Our client’s trademark is not confusingly similar with the plaintiff’s even if it is assumed to be a well-known mark;
• Our client’s mark is registered and is used in the home country (Syria) since 1957;
• The plaintiff did not submit sufficient evidence to proof that his mark is well-known;
• The defendant has actual long time use for its trademark in Jordan, and
• There is no likelihood of confusion since the defendant’s core business is heavy vehicles while our client’s products are under class 3.

The Trademark Registrar has issued its decision to cancel our client’s trademark considering the plaintiff’s mark CAT Caterpillar is well-known and Cat Wax is confusing similarity thereof.

The decision was appealed before the Supreme Court, and after full prosecution the Court made its judgment in our client’s favor justifying its decision as follows:

• In this case, it is assumed that the plaintiff’s trademark is famous and that there is no similarity between both marks that could confuse the public or leads to unfair competition;
• Additionally, there is a big difference in the shape between both trademarks as well as their goods, and
• Due to the vastly different channels of trade between the allegedly infringing mark and the famous mark, there will not be confusion between the marks.

If you have any questions, please contact us at jordan@qumsieh.com.

The translation of the word “Al Attar” is druggist and “AL Attar Al Rasheek” is the graceful druggist.

When an application for a trade name is applied for, it will be examined with the Commercial Names Register only without reference to the Trademarks Registry for any conflicting prior trademark registration. When applying for the registration of a trademark, however, the application will be examined by Trademark Registry as well as the Commercial Names Registry.

Legal basis
A cancellation action against a commercial name is possible within five (5) years from the date of filing the application and it can be based on prior trademark registration in Jordan or aboard.

In this case, the prior use in Jordan is a strong factor, which can aid the removal of a commercial name from the register.

Acting on behalf of our client, we filed a cancellation action against the commercial name “AL Attar Al Rasheek”, based on prior use and registrations in Jordan and abroad, and after full litigation, the Registrar of Commercial Names has ruled for the cancellation of “Al Attar Al Rasheek” in the name of Mahmoud Ebraheem Saleh and Co.

No appeal was submitted to the Supreme Court within the allowed time (i.e. 20 days), therefore the said decision has become final.

For more information please contact us a jordan@qumsieh.com.

Acting on behalf of our client, GA MODEFINE S.A., a Swiss manufacturer and the owner of the trademark “ARMANI & GIORGIO ARMANI”, we submitted a cancellation request against the above trademark registration based on the following:

• Our client has prior registration of the mark “ARMANI & GIORGIO ARMANI” in Lebanon and world-wide;
• Similarities between the marks;
• Our client’s trademark is well-known due to its world-wide use and its registrations covering several versions of the mark, classes, and in many different countries, and
• The registration of the trademark “KA KINAR ARMANI” would lead to a likelihood of confusion to the consumers as to the source of the products bearing that mark.

After reviewing our arguments, submitting the necessary evidences, and appointing an expert, the Court accepted our petition and issued a decision to cancel the registration of the trademark “KA KINAR ARMANI” No. 112364 from the registry.

For more information please contact lebanon@qumsieh.com.