A recent Trade Mark Registry decision confirms that well-known global brands are well protected in Mauritius.
The case involved an application by a Mauritian company called Exparel Limited to register the trade mark JSP-JUST SAFETY PROFESSIONAL in classes 25 (the clothing class) and 35 (the business services class) in Mauritius. The application was opposed by a UK company called JSP Limited.
JSP Limited is based in Oxford and was established in 1964. It claims to be "Europe's leading independent manufacturer" of "above the neck Personal Protective Equipment (PPE)", as well as a leader in industrial head protection. The products it manufactures include goggles, helmets, ear defenders and respirators, and the company supplies businesses in, among others, the following industries – automotive, steel, oil, energy, chemical, manufacturing, agricultural, construction and civil engineering.
JSP Limited exports its products to over 90 countries, and it claims that some 40 million people use its products in the workplace. The company maintains that its products are of a very high calibre, and that they conform to international performance standards. It also says that it does a great deal of research and development, and engages closely with users when it comes to product development.
JSP has been selling products in Mauritius since 2002 through a distributor called Knight Trading Agency.
The applicant, Exparel, at one stage bought genuine JSP products from an authorised international distributor called Tulip, and sold these goods in Mauritius. It then decided to start using the JSP trade mark on goods that were not manufactured by JSP Limited, but rather by a Chinese company. As part of this strategy, it applied to register the trade mark JSP-JUST SAFETY PROFESSIONAL in Mauritius. When JSP Limited raised an objection, Exparel offered to remove the "JSP" and amend the trade mark to JUST SAFETY PROFESSIONAL. No agreement was ever reached.
Although JSP Limited has registrations for the trade mark JSP in much of the world, it doesn't have one in Mauritius. So it based its opposition on other grounds. The first of these was that, as a result of its previous dealings in JSP products, Exparel knew that it had no rights to the trade mark JSP and it had therefore filed its application in bad faith.
A second ground went like this: the trade mark JSP is well known throughout the world, so the use of the trade mark JSP JUST SAFETY PROFESSIONAL will deceive or cause confusion. The company argued that consumers will mistakenly assume that Exparel is an authorised licensee of JSP Limited, and that its use of the trade mark could harm the brand's reputation.
In support of this second ground, JSP Limited referred to section 36(2)(e) of the Patents, Industrial Designs and Trademarks Act, 2002, which talks of trade marks that are confusingly similar to "a mark or trade name which is well known in Mauritius for identical or similar goods or services of another enterprise." The company also referred to article 6(1)(bis) of the Paris Convention, which requires members to cancel the registration, or prohibit the use, of "a trade mark which constitutes a reproduction, an imitation or a translation liable to cause confusion, of a mark considered by the competent authority ... to be well known in that country as being already the mark of a person entitled to the benefits of this convention".
JSP Limited also claimed that the trade mark application constituted an "unfair practice" in terms of section 6(1) of the Protection against Unfair Practices (Industrial Property Rights) Act, 2002. This states that "an act or practice which ... is likely to cause damage to the goodwill or reputation of another's enterprise shall constitute an unfair practice regardless of whether such act or practice causes confusion." It goes on to say that such damage may result from "the dilution of the goodwill or reputation attached to ... a trade mark, whether registered or not".
Exparel, in its counter-statement, simply denied all the claims made by JSP Limited. On 20 November 2015, the controller found in favour of JSP Limited, with the result that the trade mark application was refused.
Multinational brand owners will be reassured by this decision. But our advice to foreign companies is that they should seek registration in Mauritius. It's always risky to simply rely on fame or repute, and it's worth remembering that in this particular case there was also a strong allegation of bad faith based on prior conduct – something that might not apply in all cases.
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