This court will be used to hold hearings related to appeals against final refusal decisions by the Registrar, litigation proceedings with respect to infringement cases and oppositions by third parties, and cancellation proceedings. This step is meant to accelerate the decision making process for the above mentioned legal cases.

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

Accordingly, it is now required to revise the previous power of attorney forms to be in line with the new law. The old powers of attorney will not be accepted for appeals of Registrar Decisions before the Administrative Court.

To download the revised form, please click here.

For more information, please contact jordan@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 previous distributor of the Turkish company, AWAJ Company for Investment and International Trade (NAJWAN), registered the word mark “ELVAN” without approval or knowledge of the Turkish company on 21 June 1999 under class 30 in Jordan.

As a result of canceling the distribution agreement between Elvan and NAJWAN, the latter filed a criminal case again the Jalal Bonduq & Co. and obtained a seizure order and seized the products value US$300,000.

We filed an appeal against the seizure order within the legal term of 8 days claiming that ELVAN is part of the manufacturer name which was established for more than 130 years and the trademarks appearing on the products are “ELVAN Jelaxy with color design, “ELVAN TODAY with color design” and “ELVAN Toffix with color design”. Plus, the word ELVAN in Turkish means colors and our client has registered its translation (ALWAN) in Jordan. After full litigation the Court issued a decision to cancel the seizure order and release the products. NAJWAN filed an appeal, but it was rejected.

We note that Courts in Jordan rarely issue a decision to cancel a seizure order.

If you have any question regarding the above or need assistance in Jordan, please contact us at jordan@qumsieh.com.