Case No 7927, 1, q, 1437H, between Awlad Badawi CO. vs. Ministry of Commerce Cancellation of Un-used trademark Before Administrative Court in Riyadh Opposition on the basis of imitation of family name by the applicant of trademark. A dictionary word cannot be refused registration merely on the basis of a family name of any person.
In this case, the plaintiff filed an opposition against the decision of Ministry of Commerce and Industry (MoCI) to accept the word Al Jazzar in favor of applicant, in that this name is the family name of the plaintiff and under Saudi trademark law, it is prohibited to register names of other people, pictures, or trade names unless those people or their heirs agree to such use.
The defendant argued that the two trademarks are different in that the applied trademark consists of the words, PARK AVENUE, written distinctively within a framed rectangle whereas the plaintiff trademark consists of the word, AVENUE. The defendant further argued that both trademarks differ in pronunciation and form in a way that there are no chances of confusion to consumers. The applicant further added that its trademark is also registered in country of origin before the plaintiff registered its trademark in the Kingdom of Saudi Arabia (KSA), and therefore the plaintiff has no cause to object the accepted mark.
In its decision the learned judge ruled that a personal name means a name that identifies a specific person and Al Jazzar is not the name of a specific person; thus it does not identify the plaintiff only. The trademark, subject of registration application, consists of a number of elements: the word Al Jazzar written in Arabic letters, as well as a circular flower like-drawing with two ribbons hanging from it. The English translation of Al Jazzar is the Butcher.
The court further ruled that the trademark protection is not merely for the word Al Jazzar rather the protection will be for a trademark as whole. The word Al Jazzar contained in the trademark denotes a person who works as a butcher, not a family name; hence it is not included in the prohibition provided for in trademark law as relied upon by the plaintiff. The legal memoranda approved by the Minister of MoCI, prohibiting the registration of family names, are explanatory memoranda to the Law. The court stressed on the fact that Linguistically, a person who works as a butcher is called Al Jazzar, therefore the term is not used to denote a family name and is not an attempt to use the family name of plaintiff. The registration decision was declared as consistent with the Law and the case was dismissed.