OUR CLIENT’S MARK	OPPONENT’S MARK

ABU DHABI – On 25 June 2022, we filed a trademark application on behalf of our client for “GPS GROUP” in the UAE in class 39. The application was assigned number 331595 and then published in the Official Gazette on 29 July 2022.

United Parcel Service of America, Inc. filed an opposition against our client’s application on the basis of similarity with their well-known trademark registered in several classes and several countries, including in the UAE in class 39, as follows:

• The similarity between the marks in sound and appearance;
• Their UPS trademark is a well-known trademark registered in several countries and used on products that fall within classes 2, 3, 4, 10, and 39;
• Prior registrations of the UPS mark are in several classes;
• Allowing the registration of GPS GROUP contradicts the Trademark Law in the U.A.E. and International Conventions and will mislead and confuse consumers.

In response, we submitted counterarguments based on the following:

• Lack of alleged similarity since our client’s mark has a distinct design, thus, eliminating the likelihood of confusion, and
• Our client’s mark (the letters GPS) is derived from the initials of the company’s legal commercial name.

The Registrar accepted our arguments, issued a favourable decision rejecting the opposition raised by the opponent, and ordered our client’s application to register.

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

OUR CLIENT’S MARK	OPPONENT’S REGISTERED MARK

GAZA – On 19 July 2017, we filed a trademark application for registration on behalf of our client, Enka Hijyen Urunleri Sanayi Ve Ticaret Anonim Sirketi. (a Turkish Company), for PADDLERS in Gaza in class 5. The application was assigned number 23093 and then published in the Official Gazette number 60 on 28 August 2018.

The Procter & Gamble Company (a USA company) filed an opposition against our client’s application on the following grounds:

• The similarity between our client’s mark and their registered trademarks “Pampers” in several designs, classes, and countries;
• Prior registration and extensive use of the brand “Pampers” worldwide, including Jordan, and
• Allowing the registration of PADDLERS will confuse the public as to the origin of the products and contradicts Trademarks Law and international conventions.

In response, we submitted counter-arguments based on the following:

• Our client’s mark was filed in accordance with local Trademark Law and received no refusals by the examiner or the Trademarks Office due to the lack of the alleged similarity;
• Lack of confusion between both marks in terms of appearance, sound, connotation, and commercial impression;
• Use and registration of PADDLERS worldwide including the home country (Turkey), and
• Both marks have two (2) different meanings in Arabic when translated from English.

The Registrar accepted our arguments, issued a favourable decision rejecting the opposition raised by The Procter & Gamble Company, and ordered our client’s application to register.

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

OUR CLIENT’S MARK	OPPONENT’S MARK

BAGHDAD – On 5 November 2019, we filed a trademark application on behalf of our client, PAKTEN SAGLIK URUNLERI SANAYI VE TICARET ANONIM SIRKETI (a Turkish manufacturer) for “Joyjo Baby” in Iraq in class 36. The application was assigned number 80463 and then published in the Official Gazette on 16 November 2020, subject to the opposition period of 90 days.

Unicharm Gulf Hygienic Industries ltd, a Saudi Arabian company, filed an opposition against our client’s application based on the following:

• The similarity between the marks in sound and appearance;
• Prior registrations of “BabyJoy” in different shapes in Iraq and worldwide, and
• Allowing the registration of “Joyjo Baby” contradicts Trademark Law in Iraq and International Conventions and would mislead and confuse consumers.

We submitted our counter-statement based on the following:

• Both marks are evidently different and distinguishable by their designs;
• Although both marks consist of the word “Baby”, the overall appearance of the logotype is distinguishable;
• The main feature of our client’s mark is the word “Joyjo” while the main feature of the opponent’s mark is the word “Baby”, and
• Our client’s mark is easily distinguished due to the differentiation in pronunciation.

The Examiner accepted our argument, issued a decision to reject the opposition raised by Unicharm Gulf Hygienic Industries ltd, and ordered our client’s application to register.

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

OUR CLIENT’S MARK	OPPONENT’S REGISTERED MARK

ABU DHABI – Pursuant to the last hearing on 31 March 2021, before the Court of Cassation (refer to our news article of April 2021), the Court ordered a transfer of the case back to the Court of Appeals for review by a different jury, because:

• The decision contradicts the laws and regulations to determine the similarity between both marks, and
• The decision did not examine the evidence and the other supporting documents in the case file.

It has also requested that the Court of Appeals appoints a trademark Expert.

The Court of Appeals held a hearing on 15 June 2021. The jury nominated an Expert to study the case files, hear the statements of both parties, and look at the Trademark Office registry to determine the following:

• The level of similarity between both marks;
• Assuming similarity exists, the Expert must establish whether it will likely confuse the consumers;
• Whether IJTI is well known, and
• Which party has prior use of its trademark in the UAE.

The Expert’s report included the following points:

• JTI owns a prior registration in the UAE but does not have prior use;
• Our client’s mark, IJTI, is not considered to be a well-known trademark;
• Definite lack of similarity between IJTI and JTI, and
• Based on the evidence, the confusion is not likely.

After another round of hearings, after reviewing all of the above, and the previous court sessions, on 19 October 2021, the court ruled in favour of our client, to allow its registration, and ordered the opponent to pay the legal costs.

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

OUR CLIENT’S MARK	OPPONENT’S REGISTERED MARK

 
ABU DHABI – On 16 December 2018, we filed a trademark application on behalf of our client, I.J. Tobacco Industry FZE, for the mark IJTI- I. J. TOBACCO INDUSTRY in the UAE in class 34. The application was assigned Serial No. 303347 and was then published in the Official Gazette on 30 January 2019.

Japan Tobacco Inc. filed an opposition against our client’s application based on alleged similarities with their registered trademark JTI in class 34 in Yemen number 15031, arguing the following:

• The similarity between the marks;
• Possible confusion between the respective products;
• Prior registration of JTI by Japan Tobacco worldwide, including the UAE, and
• Allowing the registration of IJTI (our client’s mark) contradicts the Trademarks Law.

We submitted a counter statement based on the following:

• Lack of definite similarities between the marks;
• No evidence of confusion between both marks in terms of pronunciation or general appearance;
• Our client uses the brand IJTI in the UAE before the use of JTI by Japan Tobacco in the UAE;
• Our client uses its commercial name as their brand, therefore, the mark IJTI is protected as per the articles of the law;
• The letters IJ in our client’s mark stands for the initials of the founder of our client, where TI stands for Tobacco Industry;
• Worldwide registration of our client’s mark, and
• Our client’s mark, IJTI, has been accepted and registered in the opponent’s home country of Japan.

The Oppositions Committee accepted our arguments and issued a favourable decision by rejecting the opposition raised by the opponent. The opponent then filed an appeal against said decision, where the committee retracted its first decision and issued an adverse judgment against our client’s application.

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.

Finally, the matter was reviewed by the Court of Cassation where it issued a favourable decision and transferred the case back to the Court of Appeals to assign an expert to (i) establish whether the similarity between both marks really exists, (ii) the popularity of the challenged mark (IJTI) over JTI, and (iii) to finally determine whether the defendant (our client) enjoys the prior use privilege.

For more updates on the proceedings, please contact uae@qumsieh.com.

OUR CLIENT’S REGISTERED MARK	CITED MARK

 
CAIRO – Our client, Bal Du Moulin Rouge, a French company (media producer, manufacturer, and service provider), is the owner of the famous trademark MOULIN ROUGE, registered in several iterations worldwide, including Egypt, in a variety of International Classes, including International Class 30 since 1979.

It came to our attention that on 7 September 2018, an application for registration was published in the Official Gazette number 937 in Egypt for “Moulin rouge” in English and Arabic characters in International Class 30 under number 0261802, owned by a local manufacturer.

Acting on behalf of our client, we filed an opposition against the cited mark based on the following:

• The exact spelling and pronunciation of the literal element “Moulin Rouge”;
• The prior registration and the prior use of “Moulin Rouge” by our client worldwide since 1979, and in Egypt since 2010;
• Our client’s use of its brand extensively worldwide, making it a well-known mark;
• The applicant’s motive to take advantage of the popularity and the fame of our client’s well-known trademark for a commercial purpose;
• That confusion amongst customers is likely to occur due to the notoriety of our client’s mark;
• Our client’s commercial name consists of the word MOULIN ROUGE; thus, the registration of the same by a third party is not allowed according to Trademark Law in Egypt, and
• Allowing the registration of “Moulin rouge” contradicts the International Conventions and will mislead and confuse consumers.

The Registrar reviewed our statement and issued its favourable decision to halt the registration procedure for the challenged mark and remove it from the registry.

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

OUR CLIENT’S MARKS	OPPONENT’S REGISTERED MARK

ABU DHABI – On 30 July 2017, we filed a trademark application on behalf of our client, Mani Food Products Development Company, for “MANI” in the U.A.E. in class 30. The application was assigned number 277244 and then published in the Official Gazette on 28 February 2018, subject to the opposition period of 30 days.

Société des Produits Nestlé S.A. filed an opposition against our client’s application based on the following:

• The similarity between the marks in sound and appearance;
• Maggi is a well-known trademark registered in several countries and used on products that fall within classes 21, 29, and 30;
• Prior registrations of Maggi in several classes and in different shapes;
• Our client filed its trademark in bad faith, and
• Allowing the registration of MANI contradicts the Trademark Law in the U.A.E. and International Conventions, and will mislead and confuse consumers.

We submitted our counter-statement based on the following:

• Both marks are evidently different and distinguishable by their designs;
• The clear difference between our client’s mark phonetics and the opponent’s;
• Although both marks share the same letters (i.e. M, A, and I), those are general terms and each mark has its own disguise;
• Our client’s mark is derived from the company’s legal commercial name;
• The fact that “Maggi” is a well-known trademark is irrelevant in this matter, thus, our client has no intention or whatsoever of benefiting from the opponent’s mark popularity, and
• The level of awareness among the public consumers in the UAE is high, eliminating the possibility of confusion.

The Registrar accepted our arguments and issued a favourable decision rejecting the opposition raised by the opponent and ordered our client’s application to register.

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

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.

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

OUR CLIENT’S MARKS	OPPONENT’S REGISTERED MARK

DOHA – On 3 October 2017, we filed a trademark application for the registration on behalf of our client, HELVACIZADE GIDA ILAC KIMYA SANAYI VE TICARET ANONIM SIRKETI, for “Sunilla” in Qatar in class 29. The application was assigned number 117627 and then published in the Official Gazette on 2 December 2018.

Basateen Foods S.A. Co. (a Saudi Arabia company) filed an opposition against our client’s application on the following grounds:

• The similarity between our client’s mark and their registered trademark in terms of pronunciation, appearance, and products;
• SUNOLA is a well-known trademark registered in several countries and used on products that fall within classes 29, 30, 31, and 32;
• Earlier registration of SUNOLA in the home country (Saudi Arabia) and many neighbouring countries including Qatar, and
• Allowing the registration of our client’s mark will confuse consumers and contradicts Trademarks Law and international conventions.

In response, we submitted counter-arguments based on the following:

• Lack of alleged similarity since our client’s mark appears in a distinct design and a device, thus, eliminating the confusion possibility, and
• Prior use of “Sunilla” by our client in Qatar since 2013, which is earlier than the registration date of SUNOLA by the opponent in 2014.

The Registrar accepted our arguments and issued a favourable decision rejecting the opposition raised by the opponent and ordered our client’s application to register.

For further details, please contact qatar@qumsieh.com.

OUR CLIENT’S MARKS	OPPONENT’S REGISTERED MARK

ABU DHABI – On 11 February 2011, we filed a trademark application for the registration on behalf of our client, EVEREST S.A. HOLDING AND INVESTMENT COMPANY, for “everest” in English and Arabic characters in the UAE in class 43. The application was assigned number 186649 and then published in the Official Gazette on 1 May 2014.

S. Narinder Acomar & Co (an Indian company) filed an opposition against our client’s application on the following grounds:

• Similarity between both marks in terms of spelling and pronunciation;
• Prior registration for EVEREST by the opponent in classes 29 and 30 in several countries including the UAE since 2013;
• The items of the list of goods in their registrations overlap with our client’s application, 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:

• Although both marks consist of the word “everest”, the overall appearance of the logotype is distinguishable and our client’s mark includes a transliteration of the word into Arabic;
• Our client’s commercial name contains the word “everest”;
• The classes (and its related items) are different from those of the opponent’s trademark, and
• Earlier world-wide registrations of “everest” by our client since 2009.

The Registrar accepted our arguments and issued a favourable decision rejecting the opposition raised by S. Narinder Acomar & Co and ordered our client’s application to register.

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