(by Essam Abdel Khaleq – legal consultant at United Trademark and Patent Services ("UTPS")
The client M. & B. marchi E brevetti SRL is a famous company and who is the proprietor of the well-known trademark "ARISTON", and it's a part of Ariston thermos group of companies which was established on 1930 in Italy and having the revenue of €1.57 billion.
UTPS filed an opposition against the trademark application "MARKARISTON" filed by a local company in UAE on behalf of the client, based on the following grounds:
- Our client is the owner of the trademark "ARISTON" in UAE and worldwide.
- Registration of the opposed trademark will lead to confusion among public.
- Registration of the opposed trademark will be violating the UAE trademark law and Articles of Paris Convention.
- Registration of the opposed trademark take advantage of the reputation of the client's marks, will be detrimental to well-known status of those marks and distinctive character of the same.
The Trademark Department officials decided to reject the registration of the opposed trademark based on the following grounds:
- The Jurisprudence and judgments precedent confirmed that to evaluate the similarity between two trademarks, marks should be taken into consideration as a whole and should not be divided into parts,
- As the two trademarks cover the same class, and the opposed application contains the famous trademark of the opponent "ARISTON", this will lead confusion among the public, and upon the technical examination for the two marks, the Examiner confirmed the similarity between the marks in terms of their overall appearance,
- Since Article 3 of the UAE trademark law articulates:
"The following shall not be registered as a Trademark or a component thereof:
9) Marks which are likely to deceive the public or which contain false indications as to the origin or source of the products or services, or as to its other characteristics, as well as marks containing an indication of a fictitious, imitated or forged trade name."
Based on the aforementioned grounds, the Examiner decided to accept our opposition and to reject the opposed trademark application.
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