OUR CLIENT’S MARK	OPPONENT’S MARK

SANA’A – On 8 November 2016, we filed a trademark application on behalf of our client, I.J. Tobacco Industry FZE, for IJTI- I. J. TOBACCO INDUSTRY in Yemen in class 34. The application was assigned number 76722 and then published in the Yemeni Official Gazette on 25 March 2017.

Japan Tobacco Inc. (JT) filed an opposition against our client’s application on the basis of similarity with their registered trademark JTI in Yemen, number 15031.

We submitted a counterstatement based on the following:

• Lack of definite similarity between both marks;
• Our client’s mark uses their commercial name as their brand. Therefore, the protection of IJTI is granted by law;
• 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 Examiner accepted our counterstatement and issued a decision to reject the opposition raised by JT. The adverse party had appealed the Examiner’s decision before the Court of First Instance, where an unfavourable decision (in favour of JT) was issued.

We appealed the decision before the Court of Appeals, and after a full round of litigation, the court issued a favourable decision rejecting JT’s case and allowing our client’s trademark to register.

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

OUR CLIENT’S MARK	OPPONENT’S MARK

 
TUNIS – On 7 November 2016, we filed a trademark application for registration on behalf of our client, I.J. Tobacco Industry FZE, for “IJTI- I. J. TOBACCO INDUSTRY” in Tunisia in class 34. The application was assigned number TN/E/2016/776 and then published in the Official Gazette dated 25 December 2017.

Japan Tobacco Inc. filed an opposition against our client’s application on the following grounds:

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

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

• Lack of definite similarity between both marks;
• No evidence of confusion between both marks in terms of pronunciation or general appearance;
• Our client’s mark uses its commercial name as its brand, therefore, the mark IJTI is protected as per the articles of law;
• Worldwide registration of our client’s mark;
• JTI is not used by Japan Tobacco in Tunisia;
• Our client’s mark, IJTI, has been accepted and registered in the opponent’s home country of Japan;
• JTI is not used in commerce, and
• No possibility of confusion among consumers between the marks.

The Examiner accepted our counter-statement and issued a decision rejecting the opposition raised by Japan Tobacco Inc. and allowed our application for “IJTI- I. J. TOBACCO INDUSTRY” to register.

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

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:

1. Establish whether a similarity between both marks really exists;
2. Weigh the popularity of the challenged mark IJTI over JTI, and
3. 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).

For more information, please contact uae@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 MARK	OPPONENT’S MARK

MUSCAT – On 9 November 2016, we filed a trademark application for registration on behalf of our client, I.J. Tobacco Industry FZE, for IJTI – I. J. TOBACCO INDUSTRY in Oman in class 34. The application was assigned number 105762 and then published in the Official Gazette number 1266 on 28 October 2018.

Japan Tobacco Inc. filed an opposition against our client’s application on the following grounds:

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

In response, we submitted a counter statement based on the following:

• Lack of definite similarity between both marks;
• No evidence of confusion between both marks in terms of pronunciation or general appearance;
• Our client’s mark uses its commercial name as its brand, therefore, the mark IJTI is protected as per the articles of law;
• Worldwide registration of our client’s mark;
• JTI is not used by Japan Tobacco in Oman;
• Our client’s mark, IJTI, has been accepted and registered in the opponent’s home country of Japan;
• JTI is not used in commerce, and
• No possibility of confusion among consumers between the marks.

The Examiner accepted our counter-statement and issued a decision rejecting the opposition raised by Japan Tobacco Inc. and allowed our application for IJTI- I. J. TOBACCO INDUSTRY to register.

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

OUR CLIENT’S MARK	OPPONENT’S MARK

TOKYO – On 24 March 2017, we filed a trademark application for registration on behalf of our client, I.J. Tobacco Industry FZE, for IJTI – I. J. TOBACCO INDUSTRY in Japan in class 34. The application was assigned number 2017-040241 and then registered under number 5985527 on 6 October 2017.

According to the trademark practice in Japan for smooth application processing, after a trademark application is filed, it gets examined, registered and then published in the Official Gazette where any interested parties can either a) file an opposition to the decision to register the trademark or b) file a cancellation action against the registered trademark. Both actions are filed with the Commissioner of the Japan Patent Office (JPO).

Accordingly, Japan Tobacco Inc. (the plaintiff) filed an opposition against our client’s registration under the basis of similarity with their registered trademark JTI in Japan number 4486587.

The JPO reviewed the opposition statement and declined the request for lack of alleged similarity, so the plaintiff filed a cancellation action against IJTI, but again, the JPO reviewed the request of the cancellation and decided to maintain its previous decision based on the following:

• Lack of definite similarity between both marks in terms of pronunciation or general appearance;
• The plaintiffs’ mark “JTI” trademark is not a well-known mark;
• JTI is not used in commerce, and
• No possibility of confusion among consumers between the marks.

Finally, the JPO issued its final decision to maintain the registration of our client’s mark number 5985527.

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

OUR CLIENT’S MARK	OPPONENT’S INFRINGING MARK

BAGHDAD – On 30 October 2016, we filed a trademark application on behalf of our client, I.J. Tobacco Industry FZE, for the mark IJTI- I. J. TOBACCO INDUSTRY in Iraq in class 34. The application was assigned number 73072, and then published in the Official Gazette on 24 December 2017.

Japan Tobacco Inc. filed an opposition against our client’s application on the basis of similarity with its trademark registrations for JTI worldwide.

We submitted a counter statement based on the following:

• Lack of definite similarity between both marks;
• No evidence of confusion between both marks in terms of pronunciation or general appearance;
• Our client’s mark uses their commercial name as its brand, therefore, the mark IJTI is protected as per the articles of law;
• 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 Examiner accepted our counter statement and issued a decision to reject the opposition raised by Japan Tobacco Inc. and allowed our application for IJTI- I. J. TOBACCO INDUSTRY to register.

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

OUR CLIENT’S MARK	OPPONENT’S MARK

ERBIL – On 4 December 2017, we filed a trademark application on behalf of our client, I.J. Tobacco Industry FZE, for the mark IJTI- I. J. TOBACCO INDUSTRY in Northern Iraq in class 34. The application was assigned number 3964, and then published in the Official Gazette on 2 January 2018.

Japan Tobacco Inc. filed an opposition against our client’s application on the basis of similarity with its pending trademark JTI number 4179.

We submitted a counter statement based on the following:

• Lack of definite similarity between both marks;
• Our client’s mark uses their commercial name as their brand, therefore, the mark IJTI is protected as per the articles of law;
• 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 Examiner accepted our counter statement and issued a decision to reject the opposition raised by Japan Tobacco Inc. and allowed the application for IJTI- I. J. TOBACCO INDUSTRY number 3964 to register.

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