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.
Case Number:
(9798)
The case involves a trademark application for “AGE REVITALIZE” in Class 3. The Trademark Office refused the application, citing descriptiveness under Saudi trademark law.
The applicant appealed to the administrative court, seeking to overturn the Trademark Committee’s decision. The appeal argued that the mark “AGE REVITALIZE” is distinctive and not merely descriptive of the goods.
The refusal was based on Article 2 of the Saudi Trademark Law, similar to Article 3 of the GCC Trademark Law, which prohibits marks that are descriptive. The applicant argued compliance with Article 1, asserting that the mark is a distinctive combination of words.
Detailed Analysis of the V-Comb Case
Background and Initial Refusal
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.
Appeal to the Administrative Court
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Court’s Decision
The defendant (Ministry of Commerce and Investment) responded, asserting that the mark “AGE REVITALIZE” was clearly descriptive, indicating that the mark describes the goods as giving new life, energy, or activity. Thus, it contravened Article 2 of the law. The administrative court in Riyadh upheld the Trademark Committee’s decision, refusing registration of the mark “AGE REVITALIZE” due to its descriptiveness. The court stated that the word “REVITALIZE” undeniably describes the goods as giving life, energy, or activity, which is prohibited under Article 2 of the Trademark Law.