V-Comb Case

Case No. 9798 between Tolife Technologies Pty Ltd vs Fares Yahya Mashreqi Trading Co.

Opposition on the basis of un-registered well-known trademark

Earlier use and fame in Saudi Arabia is sufficient cause to cancel a later trademark application.

In this case before Administrative Court in Riyadh a trademark V-COMB accepted and published for registration was challenged by Tolife Technologies of Australia on the basis of foreign registrations and use of mark in Saudi Arabia. The trademark of opponent was not registered in Saudi Arabia.

The opponent argued that the applicant has wholly copied its trademark V-COMB and that the applicant was well aware of the fame of V-COMB in favor of opponent. MoCI as a second respondent argued that since the mark of opponent is not registered in MoCI records, the only reason for court to reverse the acceptance decision will be if opponent proves fame of mark in Saudi Arabia. The opponent filed evidence of use in Saudi Arabia and submitted a copy of local distribution agreement. Advertising material used in Saudi Arabia were also submitted with court alongwith foreign registrations details in multiple countries.

In its judgement the learned judge ruled that the earlier registrations in different countries and fame of opponent’s trademark is established with the evidence on record including local distributor agreement and advertising material. The fact that opponent’s mark is used in Saudi Arabia under identical trademark as filed by applicant (defendant) clearly establish imitation. The court further ruled that well-known marks should also be protected under international conventions to which Saudi Arabia is a member. The applied mark was refused by the court.

This case is a landmark case for enforcement of an unregistered trademark with a prior use in Saudi Arabia.

IP Decisions KSA