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.

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 REGISTERED MARK	CITED MARK

SANA’A – Our client, DEEKO BAHRAIN WLL, a Bahraini company, is the owner of the famous registered trademark DANA in English and Arabic characters in the Middle East region, including Yemen in classes 6, 16, 17, and 21 since 2009.

It came to our attention that on 3 May 2020, an application for registration was published in the Official Gazette number 7-2020 in Yemen for “Dana Plastic Products” in Arabic characters in class 21 under number 95839, owned by Radwan Yahya Ali Elthalaia (a Yemeni company).

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 DANA;
• Our client’s mark is well-known and widespread in the Yemeni market;
• Our client’s exclusive use of its brand in the region, making it a well-known mark;
• The applicant’s motive to take advantage of the popularity and fame of our client’s well-known trademark for a commercial purpose;
• Although the challenged mark’s appearance is different, the phonetics of it are similar to our client’s;
  The prior registration and the prior use of DANA by our client worldwide, and
• Allowing the registration of the opponent’s mark contradicts Trademark Law and would 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 yemen@qumsieh.com.

OUR CLIENT’S REGISTERED MARK	OPPONENT’S CITED MARK

CAIRO – Our client, YILDIZ PUL OTOMOTIV MOTOR PARCALARI SANAYI ANONIM SIRKETI, the famous Turkish spare parts, machinery, and hardware manufacturer, is the owner of the registered trademark “VADEN ORIGINAL” in English and Arabic characters through the International Registration system, in class 7, class 12, and class 17 since 2008. The registrations are protected worldwide, including in Egypt.

It came to our attention that on 7 March 2019, an application for registration was published in the Official Gazette number 943 in Egypt for “VADEN” in English and Arabic characters in International Class 7 under number 336473, owned by Arabtech Trading Corporation Atco International.

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

• The close similarity in appearance between both marks;
• The prior registration and the prior use of “VADEN” by our client worldwide since 2007;
• Our client’s use of its brand extensively worldwide, making it a well-known mark;
• Our client’s use of the mark across diverse markets;
• 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, and
• Allowing the registration of “VAGEN” contradicts the Trademark Law in Egypt Article 68 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.

OUR CLIENT’S REGISTERED MARK	CITED MARK

ERBIL – Our client, Beyaz Kagit, a Turkish manufacturer, is the owner of the registered trademark “Peros” in several iterations worldwide, including in home country and Northern Iraq, in International Class 3 under number 3044 since 2015.

It came to our attention that on 27 January 2020, a local trader has filed an application for registration for “Peros” in International Classes 29 and 30 under number 6926. Acting on behalf of our client, we filed an opposition against the cited mark based on the following:

• The close similarity in appearance between the design marks;
• The exact spelling and pronunciation of the literal element “Peros”;
• Our client’s mark is well-known and widely spread in the markets;
• Despite the fact that the cited mark falls under different classes, the confusion amongst customers is likely to happen due to our client’s mark popularity, and
• The prior registration and the prior use of “Peros” by our client worldwide since 2015.

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 erbil@qumsieh.com.

OUR CLIENT’S REGISTERED MARKS	OPPONENT’S SPOTTED MARK

ABU DHABI – Our client, Adeeb Derawan Sons Company (Al Marai), a Syrian factory, is the legal owner of the registered trademarks HANA “in Latin and Arabic Latin” in class 29 in the UAE under registration numbers 198723 and 103060.

It came to our attention, through our Watching Department, that an application for HANA in Latin and Arabic characters in class 29 was filed in UAE on 19 October 2016 by applicant Al Seer Group and was assigned the serial number 261640 (the Opposed Mark), which was then published in the Official Gazette as number 174 dated 29 March 2017.

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

• Our client is a well-known company manufacturing foodstuff products in class 29 since 1994;
• The similarity between both marks in terms of appearance, pronunciation, and products;
• Prior several registrations of HANA by our client in the home country and abroad since 2008, including the UAE;
• Prior use of HANA by our client, and
• Our client’s mark falls under the category of well-known trademarks.

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 uae@qumsieh.com.

OUR CLIENT’S MARK	OPPONENT’S REGISTERED MARK

MUSCAT – On 11 May 2017, we filed a trademark application for registration on behalf of our client, BTA Havalimanlari Yiyecek Ve Icecek Hizmetleri Anonim Sirketi, for LUNA TAPAS LOUNGE in Oman in class 43. The application was assigned number 110122 and then published in the Official Gazette on 28 October 2018.

National Food Industries Company Ltd filed an opposition against our client’s application on the following grounds:

• They are a foodstuff company established in Saudi Arabia in 1993 and got several certificates for quality;
• Prior registration and use of its trademark worldwide, including Oman;
• The similarity between the marks, and
• Allowing the registration of our client’s mark contradicts Trademark Law and international conventions.

In response, we submitted counter-arguments based on the following:

• Lack of confusion between both marks in terms of pronunciation, design, and general appearance;
• The common element between both marks is the word (LUNA), which is a girl popular name and cannot be monopolised;
• The Registrar accepted our client’s application since there is no confusion evident between both marks, and
• Potential customers can easily distinguish between both marks.

The Registrar accepted our arguments and issued a favourable decision rejecting the opposition raised by National Food Industries Company Ltd and ordered our client’s application to register.

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

OUR CLIENT’S MARK	OPPONENT’S MARK

MUSCAT – On 9 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 Oman in class 34. The application was assigned number 105762 and then published in the Official Gazette number 1266 on 28 October 2018.

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 the Trademarks Law.

In response, 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 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 Oman;
• 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 oman@qumsieh.com.

OUR CLIENT’S MARK	OPPONENT’S SPOTTED MARK

ABU DHABI – Our client, Oguz Gida Sanayi Ve Ticaret Anonim Sirketi, a Turkish manufacturer, is the legal owner of the pending trademark application BLACK BRUIN in class 32 in the UAE under serial number 268852 (currently awaiting the issuance of a final registration certificate).

It came to our attention, through our Watching Department, that an application for BLACK BRUIN in class 32 was filed in UAE on 22 August 2016 by applicant Nasser Asa’da for Trading and was assigned the serial number 258738 (the Opposed Mark), which was then published in the Official Gazette as number 175 dated 2 May 2017.

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

• Our client is a well-known company manufacturing products in class 32 since 1996;
• Prior registration of BLACK BRUIN by our client in the home country (Turkey) and abroad;
• Prior use of BLACK BRUIN by our client world-wide;
• Prior use of BLACK BRUIN by our client in UAE since 2015;
• The defendant was the local re-seller of BLACK BRUIN in UAE and has filed an application for registration of BLACK BRUIN in bad faith;
• The high similarity between both marks in terms of general appearance and pronunciation which may confuse the general public as to the origin of the products, and
• Registration of the opposed trademark contradicts the Trademarks Law and international conventions and will lead to unfair competition.

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

If you need more information, please contact uae@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.