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.

As per the practice followed in SAIP, appeals against trademark examiner refusal decisions, trademark oppositions, and infringement and breach complaints are handled by a designated committee appointed by the administration. The General Secretariat of the committees has started by publishing decisions related to copyright infringement complaints and will expand the scope to include decisions related to trademarks and patents.

For more information, please contact saudi-arabia@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 REGISTERED MARK

KUWAIT CITY – On 29 September 2016, we filed a trademark application on behalf of our client for the mark “Safya” in Kuwait in class 29. The application was assigned serial number 183881, and was then published in the Official Gazette on 12 November 2017.

BRF Singapore Foods PTE, LTD filed an opposition against our client’s application based on the following allegations:

• Similarities with their registered trademark “Sadia” in classes 29 and 30;
• Prior use and registration on a worldwide scale, and
• Prior registration in Kuwait since 2014.

 
We submitted a counter statement based on the following:

• Lack of similarities between the marks in terms of appearance and pronunciation;
• Safya has an International Registration as well as a home country registration (Turkey) since 2006;
• Prior use of Safya by our client in several neighbouring countries, and
• The Examiners in the Saudi Arabia Trademark Office did not issue any rejection based on similarity with a prior registered mark, i.e. Sadia.

The Examiner accepted our counter statement and issued a decision rejecting the opposition raised by BRF Singapore Foods PTE, LTD and allowed the application for Safya to register.

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

OUR CLIENT’S MARK	OPPONENT’S REGISTERED MARK

RIYADH – On 10 June 2017, we filed a trademark application on behalf of our client, Cinkciarz.pl Sp. z o.o., for “Conotoxia” in Saudi Arabia in class 36. The application was assigned number 1438021233, and then published in the Official Gazette on 22 June 2017 subject to the opposition period of 60 days.

Mastercard Incorporated, filed an opposition against our client’s application under the following basis:

• Similarity between the marks in terms of general appearance;
• “Cirrus” has prior registrations worldwide including Saudi Arabia;
• Allowing the registration of “Conotoxia” contradicts the Trademark Law in Saudi Arabia and International Conventions, will mislead the public and will confuse the customers about the origins of the services provided under this brand.

We submitted our counter statement evidencing the lack of similarity in pronunciation and appearance between the two marks.

The Examiner accepted our counter statement 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 saudi-arabia@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.

On behalf of our client, we registered its trademark with the Jordan Standards and Metrology Organization (JSMO), who is responsible for seizing suspected counterfeit products.

A shipment imported from China by “Mahmoud Elhaj Qasem Establishment” was seized by the JSMO for being suspected of containing counterfeit products. Our client inspected the photographic evidence of the 3720 seized items and confirmed that the products were indeed counterfeit.

On Behalf of our client, we filed a complaint before the Court of Urgent Matters in order to obtain a seizure order and stop the customs clearance for the counterfeit products. After several hearings, the court issued its decision in favour of our client and ordered the defendant to destroy the counterfeits and pay a fine of JOD1000.

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