OUR CLIENT’S MARKS	OPPONENT’S REGISTERED MARK

MANAMA – On 2 April 2019, we filed a trademark application for the registration on behalf of our client, Eastea Chai Private Limited, for “Eastea” in Bahrain in class 30 over tea products. The application was assigned number 125778 and then published in the Official Gazette on 5 December 2019.

Societe des Produits Nestle S.A. filed an opposition against our client’s application on the following grounds:

• The similarity between our client’s mark and their registered trademark with International Registration number IR 1341950 in terms of appearance, pronunciation, and phonetic tone, especially, the usage of the letters “TEA”;
• The prior registration and extensive use of the brand NESTEA world-wide, including Bahrain;
• That they own different versions of the brand “nestea”, as well as a registration of the Arabic transliteration, 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:

• Alleged Similarity

Our client’s trademark consists of two words, Eastern and Eastea, which makes it different from the opponent’s when it is read together.

The word Eastern refers to the origin of the product, i.e. the tea, while the word Eastea is a combination of two words, Eas and tea, where Eas is an abbreviation for Eastern. And the word “tea” is a generic term and no one can claim exclusive rights over such term.

• Registration

Our client is the owner of several registrations for Eastern Eastea in several countries, as well as the brand Eastern which also serves as the company’s corporate logo.

Conclusion
Our client is an Indian manufacturer where the production of tea products is very popular due to the varieties of the types of tea that comes from that country, and their brand is well known in their home country and abroad, including Bahrain.

Therefore, when comparing the similarity between two marks, one should not look into the similar aspects separately, but rather looking at the elements of the design as a whole, and in our case, the entire look of our client’s mark is way different than the opponent’s.

The Registrar accepted our arguments and issued a favourable decision rejecting the opposition raised by Societe des Produits Nestle S.A. and ordered our client’s application to register.

For more information, please contact bahrain@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 INFRINGING MARK

RAMALLAH – Our client, Tatlisumaklar Gida Maddeleri Pazarlama Ticaret Ve Sanayi Anonim Sirketi, is the legal owner of the registered trademark “Troflex” in class 30 in Turkey and worldwide, including State of Palestine since 2015.

It came to our attention, through our watching department, that an application for “Troflex in Latin & Arabic characters” number 30959 in class 30 filed on 2 March 2017 by applicant “Al-Jumana company for international investment and trading” was published in the Official Gazette number 9 on 1 October 2017.

On behalf of our client, we filed an opposition based on the following:

• Similarity between the marks in terms of pronunciation, and general appearance;
• Prior use and registration of Troflext by our client worldwide, and
• Allowing the registration of Troflex number 30959 contradicts local Trademarks law and international conventions.

The opposition statements were accepted by the national Trademark Office; a decision in favour of our client was issued and as per procedure, the Trademark Office removed the alleged mark from its registry.

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

Through the trademark watch service that we provide to our clients, it came to our attention that a national application for “Giulio twist” in class 25 was published in the Official Gazette on 31 March 2016.

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

• Prior registration of our client’s mark in UAE in classes 14, 18, 25, and 35 since January 2011 and
• The registration of “Giulio twist” contradicts with Trademarks Laws and International Conventions.

The opposition statements were accepted by the Trademark Office; a decision in favour of our client was issued and as per procedure, the Trademark Office removed the alleged mark from its registry.

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

Through the trademark watch service that we provide to our clients, it came to our attention that an International Application with a similar trademark THERMIKET in class 11 was published in the Official Gazette.

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

• Prior registration of our client’s mark in Morocco in classes 7, ,9 and 11 since August 2013 and
• Visual and phonetic similarity with our client’s mark.

The opposition statements were accepted by the national Trademark Office; a decision in favour of our client was issued and as per procedure, the Trademark Office removed the alleged mark from its registry.

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

Through our watch service, we alerted our client that a similar application for “ABSOLUTE” was filed in Bahrain by a Swiss trader on 14 April 2015 under the number 1249326 and was published on 29 October 2015. So we filed an opposition against said application based on the following:

• Our client’s marks are well-known worldwide;
• Similarity between the infringed mark and the original marks in terms of pronunciation and spelling, and
• Prior registration and use of the mark ABSOLUT by our client in the home country and abroad.

The applicant of the opposed mark failed to respond to the opposition within the legal time frame as specified by Bahrain Trademark Law. Accordingly, the local Trademark Office considered the opposed mark as abandoned.

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

Original Mark
Spotted Mark

Our client, Asahi Intecc Co., Ltd, a Japanese company and the original owner of the trademark “ASAHI INTECC” registered worldwide including its home country, in class 10.

Through our watching service, we discovered a similar application for ASAHI INTECC dated 7 September 2015, was filed in Northern Iraq (NIQ) under number 2581 by a local trader and published in the Official Gazette number 64 on 4 October 2015.

Following our client’s instructions, we filed an opposition against said application based on the prior use and registration in its home country and abroad.

Considering our argument, the Registrar issued its decision and cancelled the subject application. Said decision became final since it was not appealed before the court within 30 days.

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

Our Client, SEZGIN MUCEVHERAT GUMUSCULUK SANAYI VE TICARET LIMITED SIRKETI, is the registered owner of the device trademark “So CHIC…” in the Kingdom of Saudi Arabia.

Through our watching service, we discovered a similar application for SOCHI dated 28 December 2014 was filed in Saudi Arabia in class 14 and published in the Official Gazette on 2 February 2015.

Following our client’s instructions, we filed an opposition before the Board of Grievance against said application.

Our opposition was based on the following:

1. Our client is the registered owner of the device mark “So CHIC…” in Saudi Arabia since December 2011 in class 14;
2. The opposed trademark, SOCHI, is similar to our client’s mark in terms of pronunciation, general appearance, and designated class, and
3. Prior use by our client of the mark “So CHIC…” in Saudi Arabia since 2011.

After several hearings before the Board of Grievance, a decision was issued in our client’s favour. The Board of Grievance ordered a halt to the opposed application based on similarity of the marks and prior use.

If you have any questions, please contact saudi-arabia@qumsieh.com.

Our client, Yildiz Holding Inc, is the legal owner of “ULKER Deluxe” registered in Turkey and worldwide including Yemen in class 30.

Through our watching service, it came to our attention that a similar trademark for DELUX was filed in Yemen in Latin and Arabic characters by a local trader. Our client instructed us to file an opposition against said application.

Our opposition was based on the following:

1. Prior registration of ULKER Deluxe by our client in Yemen since 30 May 2010, while the opposed mark was filed on 23 October 2013;
2. Prior use of our client’s mark in Yemen since 2011;
3. The main element of our client’s trademark is the word DELUXE;
4. Similarity between both marks will confuse the public about the origins of the products, and
5. Allowing the registration of the infringing mark will lead to unfair competition between the owner of such mark and our client.

The applicant of the opposed mark failed to respond to the opposition within the legal time frame as specified by the Yemen trademark Law; accordingly, the Registrar considered the opposed mark as abandoned.

If you have any questions, please contact yemen@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.