OUR CLIENT’S MARKS	OPPONENT’S REGISTERED MARK

ABU DHABI – On 30 July 2017, we filed a trademark application on behalf of our client, Mani Food Products Development Company, for “MANI” in the U.A.E. in class 30. The application was assigned number 277244 and then published in the Official Gazette on 28 February 2018, subject to the opposition period of 30 days.

Société des Produits Nestlé S.A. filed an opposition against our client’s application based on the following:

• The similarity between the marks in sound and appearance;
• Maggi is a well-known trademark registered in several countries and used on products that fall within classes 21, 29, and 30;
• Prior registrations of Maggi in several classes and in different shapes;
• Our client filed its trademark in bad faith, and
• Allowing the registration of MANI contradicts the Trademark Law in the U.A.E. and International Conventions, and will mislead and confuse consumers.

We submitted our counter-statement based on the following:

• Both marks are evidently different and distinguishable by their designs;
• The clear difference between our client’s mark phonetics and the opponent’s;
• Although both marks share the same letters (i.e. M, A, and I), those are general terms and each mark has its own disguise;
• Our client’s mark is derived from the company’s legal commercial name;
• The fact that “Maggi” is a well-known trademark is irrelevant in this matter, thus, our client has no intention or whatsoever of benefiting from the opponent’s mark popularity, and
• The level of awareness among the public consumers in the UAE is high, eliminating the possibility of confusion.

The Registrar accepted our arguments and issued a favourable decision rejecting the opposition raised by the opponent and ordered our client’s application to register.

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

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 Registered Mark

 
On 20 May 2014, we filed a trademark application on behalf of our client, Bilal Mohammad AL Hamwi, for “City Creamer” in Gaza in class 29. The application was assigned number 18963, then published in the Official Gazette number 54 on 28 May 2015.

Société des Produits Nestlé S.A. (“Nestlé”), the owner of trademark “Coffee Mate” filed an opposition against our client’s mark based on earlier registrations for “Coffee Mate” based on the following grounds:

• Similarity between “City Creamer” and “Coffee Mate” in terms of appearance and general look;
• Coffee Mate is a well-known trademark worldwide;
• Registration of the opposed mark will mislead the public about the origin of the products and will confuse the consumers between both products, and
• Due to the above, allowing the registration of “City Creamer” contradicts local Trademark Law.

In our response, we presented proof that “City Creamer” has no counterpart “mug design” mark to that of Opponent’s, which Opponent dismissed as irrelevant. We also argued that the figurative elements illustrated the differences in the imagery, which far outweighed any supposed similarities.

The Registrar reviewed the Opponent’s opposition and our argument, and ruled to allow our client’s mark to register. The Opponent appealed said decision before the Supreme Court, but the Committee found that a likelihood of confusion did not exist and subsequently affirmed the decision of the Registrar.

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

On 2 July 2016, our client, Bilal Mohammad AL Hamwi, instructed us to file a trademark application for “City Creamer” in the EUIPO in class 29. The application was assigned to number 012929501 then published on 5 August 2014.

Société des Produits Nestlé S.A. (“Nestlé”), the owner of trademark “Coffee Mate” filed an opposition against our client’s mark based on earlier IR mark number 883040 designating Bulgaria on the following grounds:

• Non use of our client’s mark on some of the goods for which it has applied;
• The likelihood of confusion due to the similarity of goods and design, and
• The relevant public will likely be confused between our client’s mark and their Nestlé’s mark Coffee Mate.

In our counter reply we show proof of use of our client’s mark in all items mentioned in the application. The opponent admits the presence of the stylised words in red: ‘City Creamer’ which have no counterpart in their “mug design” mark which dismisses this difference as irrelevant, since the official script in Bulgaria is Cyrillic. The opponent then asserts that as the words are in Latin script it is ‘highly unlikely that the average Bulgarian consumer will be able to read the words in the our client’s application’.

The figurative elements illustrates that the differences in the imagery far outweigh any supposed similarities.

The Registrar reviewed the opponents opposition and our argument, and finally ruled its decision to allow our client’s mark to register. Said decision became final.

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