Mars Inc., filed an opposition against said design stating that it has invented, developed, and used the same drawings and designs many years ago on its products, claiming that the opposed design contains similar colours, lines, and fonts of several protected trademarks and Industrial drawings owned by Mars.

Mars opposition was based on:

• The distinctive packaging used by Mars through invented colours and shapes being the main elements to differentiate its products from others which lead to gaining international fame;
• The red, gold, and black colours make Mars products unique;
• Continuous use and world-wide registrations of Mars logo in various shapes including Jordan, and
• The defendant design is confusingly similar to Mars protected designs.

Our defense statement was based on the following:

• The general appearance of our client’s design is dissimilar with Mars design in terms of shape, packaging, and logo (trademarks);
• The VIP logo is different than Mars’ Logo;
• The lines, fonts, colours, and drawings are far from being similar;
• The claim stating that the shape used by Solen and Mars are similar and against the law is incorrect since the shapes at issue are general, are unprotectable, and are in the public domain, e.g., the designs used by Visa, Master Card, and others are similar in overall shape, and
• Notwithstanding Mars’ failure to assert colour as a claim against VIP, the red, gold, and black colours are commonly used by chocolate companies.

After reviewing the above, the Registrar of Industrial Drawings and Designs, found that our client’s design lost its novelty due to the similarity of plaintiff’s design, and accordingly issued its decision against our favour to cancel the application. This judgment was subject to appeal before the Supreme Court within 60 days.

We appealed the decision on 26 November 2013 before the Supreme Court, and after full litigation the court found that the industrial drawing related to our client as different from Mars Inc.’ design in shape, font, text, and pronunciation, therefore, the novelty was not destroyed and the design could be registered.

The said decision is final and cannot be repealed.

If you have any question or need more information, please contact us at legal@qumsieh.com.

Our client “SOYYIGIT GIDA SANAYI VE TICARET ANONIM SIRKETI” filed a trademark application for the registration of “Kent Boringer TRIX” with color device in class 32 under No. 82414 dated 28 June 2006, which was published in the Official Gazette No. 79 on 16 March 2008.

Mars Incorporated opposed the above trademark application claiming confusing similarities with its trademarks TWIX and TRIXO registered in Classes 29 and 30.

We based our opposition on the following:

• The differences between our client’s trademark and Mars’ trademarks.
• The differences in terms of the words, the letters, the pronunciation, the phonetics, the design, and the colors.
• The list of goods and classes are different.

In the light of the above, the Registrar has issued his favorable decision rejecting the opposition by Mars Incorporated and accepting the registration of the trademark application “Kent Boringer TRIX” on 31 January 2010.

The Registrar justified his decision that our client’s trademark illustrates tremendous differences from the plaintiff’s trademarks, which therefore diminishes the possibility of public confusion.

Mars was not satisfied and appealed before the Committee of Trademarks.

However, and after full verification of and considering the above, the presiding Committee confirmed the Registrar’s decision and rejected Mars’ appeal.

If you have any questions regarding the above, kindly contact us at uae@qumsieh.com.

On 28 July 2006, the application was published in the Trademark Journal and open for opposition.

The U.S. company “Mars, Incorporated” filed an opposition against our client’s trademark, based on confusing similarity with “MARS”.

The Saudi Arabian Trade Mark Office (SATMO) found that there is no basis for the opposition and the possibility of confusing similarity does not exist and decided to reject the opposition.

Our client, Mulhens Gmbh & Co. KG has a trademark registration for “Dolly Girl” under No. 728/50 dated 19 May 2004, in respect of soap, perfume, essential oils, preparations for body care and beauty, hair lotion (lotion), dentifrices, in class (3).

An application, No.99726220, for the trademark “Dolly by Dolly Chahine” in the name of Saudi Perfumes and Cosmetics Factory, filing date 3 October 2005, was published in the Trademark Journal on 19 May 2006 in respect of soap, perfume, essential oils, preparations for body and beauty care, hair lotion (lotion), dentifrices in class (3).

Our client filed an opposition against the said application on the basis of confusing similarity with “Dolly Girl”.

After several hearings, the Bureau of Grievance found that there is high possibility of confusion between “Dolly Girl” and “Dolly by Dolly Chahine”, and issued its decision to stop the registration procedures for “Dolly by Dolly Chahine”.