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

ABU DHABI – On 25 June 2022, we filed a trademark application on behalf of our client for “GPS GROUP” in the UAE in class 39. The application was assigned number 331595 and then published in the Official Gazette on 29 July 2022.

United Parcel Service of America, Inc. filed an opposition against our client’s application on the basis of similarity with their well-known trademark registered in several classes and several countries, including in the UAE in class 39, as follows:

• The similarity between the marks in sound and appearance;
• Their UPS trademark is a well-known trademark registered in several countries and used on products that fall within classes 2, 3, 4, 10, and 39;
• Prior registrations of the UPS mark are in several classes;
• Allowing the registration of GPS GROUP contradicts the Trademark Law in the U.A.E. and International Conventions and will mislead and confuse consumers.

In response, we submitted counterarguments based on the following:

• Lack of alleged similarity since our client’s mark has a distinct design, thus, eliminating the likelihood of confusion, and
• Our client’s mark (the letters GPS) is derived from the initials of the company’s legal commercial name.

The Registrar accepted our arguments, 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 MARK	OPPONENT’S REGISTERED MARK

GAZA – On 19 July 2017, we filed a trademark application for registration on behalf of our client, Enka Hijyen Urunleri Sanayi Ve Ticaret Anonim Sirketi. (a Turkish Company), for PADDLERS in Gaza in class 5. The application was assigned number 23093 and then published in the Official Gazette number 60 on 28 August 2018.

The Procter & Gamble Company (a USA company) filed an opposition against our client’s application on the following grounds:

• The similarity between our client’s mark and their registered trademarks “Pampers” in several designs, classes, and countries;
• Prior registration and extensive use of the brand “Pampers” worldwide, including Jordan, and
• Allowing the registration of PADDLERS will confuse the public as to the origin of the products and contradicts Trademarks Law and international conventions.

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

• Our client’s mark was filed in accordance with local Trademark Law and received no refusals by the examiner or the Trademarks Office due to the lack of the alleged similarity;
• Lack of confusion between both marks in terms of appearance, sound, connotation, and commercial impression;
• Use and registration of PADDLERS worldwide including the home country (Turkey), and
• Both marks have two (2) different meanings in Arabic when translated from English.

The Registrar accepted our arguments, issued a favourable decision rejecting the opposition raised by The Procter & Gamble Company, and ordered our client’s application to register.

For more information, please contact gaza@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

BAGHDAD – On 5 November 2019, we filed a trademark application on behalf of our client, PAKTEN SAGLIK URUNLERI SANAYI VE TICARET ANONIM SIRKETI (a Turkish manufacturer) for “Joyjo Baby” in Iraq in class 36. The application was assigned number 80463 and then published in the Official Gazette on 16 November 2020, subject to the opposition period of 90 days.

Unicharm Gulf Hygienic Industries ltd, a Saudi Arabian company, filed an opposition against our client’s application based on the following:

• The similarity between the marks in sound and appearance;
• Prior registrations of “BabyJoy” in different shapes in Iraq and worldwide, and
• Allowing the registration of “Joyjo Baby” contradicts Trademark Law in Iraq and International Conventions and would mislead and confuse consumers.

We submitted our counter-statement based on the following:

• Both marks are evidently different and distinguishable by their designs;
• Although both marks consist of the word “Baby”, the overall appearance of the logotype is distinguishable;
• The main feature of our client’s mark is the word “Joyjo” while the main feature of the opponent’s mark is the word “Baby”, and
• Our client’s mark is easily distinguished due to the differentiation in pronunciation.

The Examiner accepted our argument, issued a decision to reject the opposition raised by Unicharm Gulf Hygienic Industries ltd, and ordered our client’s application to register.

For more information, please contact iraq@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 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 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 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 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.