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 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 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.

Previously, these cases were handled by two quasi-judicial committees; the first one was to adjudicate cases related to patents, integrated circuits, plant varieties, and industrial designs. The second committee was dedicated to adjudicating copyright cases.

For more information, please contact saudi-arabia@qumsieh.com.

OUR CLIENT’S MARK	OPPONENT’S MARK

DOHA – On 9 May 2011, we filed a trademark application on behalf of our client, RENAULT s.a.s, for the mark YUMAN in Qatar in class 12. The application was assigned serial number 68047 and then published in the Official Gazette number 203 on 7 November 2013.

Man Truck & Bus A. G., a German manufacturer, filed an opposition against our client’s application based on the following allegations:

• Prior registration of MAN in the home country (Germany) and abroad including Qatar;
• The visual, sound, and conceptual similarity between MAN and YUMAN, and this similarity will mislead the consumers and may confuse the general public as to the origin of the products, and
• MAN falls under the category of well-known trademarks.

We submitted a counter statement based on the following:

• YUMAN has been accepted in Qatar without prejudice, and it has several registrations worldwide;
• Although both marks fall under class 12, the goods intended for YUMAN differ from the goods protected under the MAN registration. YUMAN is used for vehicles for locomotions and its accessories while MAN is used for buses and trucks;
• Therefore, customers will examine the product they wish to buy thoroughly due to its price tag and special usage which makes it impossible for a customer to get mislead;
• Lack of definite alleged similarities between YUMAN and MAN in its appearance and pronunciation, and
• There was no record evidencing that this MAN is considered to be a well-known mark in Qatar.

The examiner reviewed both sides’ arguments and issued its decision in favour of our client denying the opposition and allowed the application for YUMAN to proceed to registration agreeing that any similarity between the marks did not rise to the requisite level of confusion.

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

OUR CLIENT’S REGISTERED MARK	OPPONENT’S SPOTTED MARK

MUSCAT – Our client, Societe Tunisienne De Chocolaterie Et De Confiserie Sotuchoc, a Tunisia manufacturer, is the legal owner of the registered trademark Maestro in class 29 and 30 in Tunisia and Oman under registration numbers TN/T/1996/17 and 85640 respectively.

It came to our attention, through our Watching Department, that an application for “Maestro” in English and Arabic Characters in class 30 was filed in Oman on 30 April 2015 by applicant Daily Food Co. and was assigned the serial number 94887 (the Opposed Mark), which was then published in the Official Gazette as number 1144 dated 24 April 2016.

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

• The similarity between both marks in terms of wording and pronunciation;
• Overlapping goods to those of our client’s registered trademark;
• Our client is a well-known chocolate manufacturer established and active since 1971;
• Prior registration of Maestro by our client in Tunisia since 1996 and Oman since 2014, and
• Allowing the registration of Maestro number 94887 contradicts the Trademarks Law and international conventions and will confuse the general public as to the origin of the products.

After full litigation, the Registrar issued its decision by granting our opposition and removing the Opposed Mark from the trademark registry.

For more information, please contact oman@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, Ducati Motor Holding S.pA, is the legal owner of the registered trademark “Ducati” in Iran, covered under in the classes 3, 9, 18, 25, and 28 since October 1996.

It came to the attention of our watch department that an application for DUCATI in classes 7, 9, 12, and 35 was filed in Iran under the name of “Mr. Abbas Shah-abadi” and published in the Official Gazette opening the opposition period.

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

• Similarity between the marks;
• Prior registration of DUCATI by our client in classes 3, 9, 18, 25 and 28, and
• Allowing the registration of DUCATI contradicts local Trademarks law and international conventions.

Taking the above into consideration, the Registrar in the Iranian Trademark Office has ruled in favour of our client, and removed the alleged mark from its registry.

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

OUR CLIENT’S MARK	OPPONENT’S REGISTERED MARK

Our client, CEBİR GİYİM SANAYİ VE TİCARET LİMİTED ŞİRKETİ, is the legal owner of the registered trademark “maraton sportwear” in class 25 in Morocco through an International Registration dated 4 December 2013.

It came to our attention, through our watching department, that an application for “MARATON” in class 25 filed on 13 February 2017 by applicant Flora – Mode was published in the Moroccan Official Gazette number 5/2017.

On behalf of our client, we filed an opposition against said application based on the prior registration of our client’s trademark in Morocco and that the marks were confusingly similar.

After full litigation, the Registrar issued its decision ruling in our favour and removed the opposed application from the trademarks registry.

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

OUR CLIENT’S MARK	OPPONENT’S REGISTERED MARK

ABU DHABI – On 17 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 the UAE in class 34. The application was assigned serial number 261478, and was then published in the Official Gazette on 29 August 2017.

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

We submitted a counter statement based on the following:

• Lack of definite similarities between the marks;
• Our client’s mark uses their commercial name as their brand, therefore, the mark IJTI is protected as per the articles of the 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 rejecting the opposition raised by Japan Tobacco Inc. and allowed the application for IJTI- I. J. TOBACCO INDUSTRY to register.

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