This is an informal case summary prepared for the purposes of facilitating exchange during the 2024 WIPO IP Judges Forum.
Tribunal of Commerce of Dakar, Senegal [2023]: Société Unite-Industrielle de Parfumerie et de Cosmetiques - UNIPARCO SA v Moustapha Fall, Decision No. 919
Date
of judgment: May 3, 2023
Issuing authority: Tribunal of Commerce of Dakar
Level of the issuing authority: First Instance
Type of procedure: Judicial (Civil)
Subject
matter: Trademarks ; Enforcement of IP and Related Laws
Plaintiff: Société Unite-Industrielle de Parfumerie et de Cosmetiques -
UNIPARCO SA
Defendant: Moustapha Fall
Keywords: Trademarks, Cancellation of trademark, Cessation of trademark Use, Injunctive relief, Permanent injunction, Withdrawal of goods from the market
Basic facts: The company SOCIETE UNITE-INDUSTRIELLE DE PARFUMERIE ET DE COSMETIQUES - UNIPARCO SA (the plaintiff) is the owner of the trademark “VIT-FEE + logo” appearing in red lettering on a white background. The trademark was registered with the African Intellectual Property Organization (OAPI) on April 25, 2006 (under registration number 54392) to cover products in classes 3 and 5 of the Nice Classification and was renewed in 2017.
The defendant, Moustapha FALL, registered with OAPI the following trademarks:
Following these registrations, Moustapha FALL marketed products in classes 3 and 5 under the trademarks VITFE or VITFEE + design in the Senegalese market. Upon discovering this commercialization, the company UNIPARCO SA served Moustapha FALL with a formal notice dated May 4, 7, and 10, 2021, demanding to cease the commercialization of products in Classes 3 and 5 under the VITFE trademark.
Despite a formal notice, the defendant continued the commercialization, leading UNIPARCO SA to file a lawsuit seeking the cancellation of the defendant’s trademarks, monetary compensation for damages, immediate withdrawal of the products and the cessation of the commercialization of the infringing products.
In defense, Moustapha FALL moved to dismiss the plaintiff's claims, contending that his trademarks did not conflict with the plaintiff's, there was no likelihood of confusion, damages were not substantiated, and fraud has not been established to warrant cessation of sales.
Held: The Tribunal of Commerce of Dakar’s decision to annul the defendant's trademarks was based on several factors that pointed to the similarity between the trademarks of the defendant, Moustapha FALL, and the plaintiff, UNIPARCO SA.
· Visual similarity: The court first considered the visual similarities, noting that both trademarks comprised nearly identical letters in the same order, with only one letter “E” difference in one of the defendant’s trademarks. only minor differences. This visual similarity was compounded by the fact that both marks used red lettering, albeit on different background colors (yellow for the defendant and white for the plaintiff).
· Phonetic similarity: The court found that the phonetic pronunciation of the trademarks was virtually indistinguishable, as the slight variation in the final letter "E" did not significantly alter how the marks were pronounced.
· Conceptual similarity: Furthermore, the court identified that from the conceptual point of view of the trademarks suggested the same notion of rapid and effective action.
The court further observed that the products covered by both trademarks fell within the same product classes (Classes 3 and 5), increasing the likelihood of confusion among consumers.
This comprehensive analysis led the court to conclude that there was a significant risk of confusion for the average consumer who may not be able to differentiate between the two marks when not viewed side by side.
Consequently, the court held that the defendant's trademarks infringed upon the plaintiff's prior rights, particularly given that the defendant’s trademarks were registered after the plaintiff’s "VIT-FEE + logo" had already been registered.
Tribunal of Commerce of Dakar, therefore, ruled in favor of the plaintiff, ordering the cancellation of the defendant's trademarks "VITFE" and "VITFE + design." The court awarded the plaintiff 20,000,000 CFA francs in damages and ordered the defendant to withdraw the products from the market, with a penalty of 300,000 CFA francs per day of delay. However, the court did not address the plaintiff's request to stop Moustapha FALL from continuing to commercialize these products.
Relevant holdings in relation to permanent injunctions: Tribunal of Commerce of Dakar addressed the cancellation of the defendant’s trademarks, which were deemed similar to those of the plaintiff, UNIPARCO SA. In its decision, the court not only annulled the defendant's trademarks but also issued an injunction requiring the withdrawal of products bearing these trademarks from the market. The court’s decision was grounded in the assessment that the defendant’s trademarks infringed upon UNIPARCO SA's prior rights. Although the case was not a conventional counterfeiting action, the court referenced provisions from Annex III of the Bangui Agreement, which allows for the removal of products deemed infringing from the market.
The court determined that the annulment of the defendant's trademarks implied that the products marketed under these trademarks could be considered infringing, warranting their removal from commercial circulation. To enforce the injunction, the court imposed a daily penalty for non-compliance. This decision underscores the court's approach to protecting trademark rights by preventing the continued sale of products associated with invalidated trademarks, even in cases not explicitly framed as counterfeiting.
However, the court did not address specific details such as the allocation of costs for the withdrawal process or the potential impact on third-party purchasers who may have acquired the products in good faith. Additionally, the court did not rule on the plaintiff's request to prohibit the defendant from further commercialization of the products under the disputed trademarks. This leaves certain aspects of enforcement unaddressed, raising questions about the practical implementation of the injunction and its broader implications for future intellectual property cases.
Relevant legislation:
· Annex III of Bangui Agreement Instituting an African Intellectual Property Organization - Act of December 14, 2015, Articles 2, 3, 4, 6, 28, 54, and 55
· Civil and Commercial Obligations Code, Article 118
· Civil Procedure Code, Article 81
· Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), Articles 41 and 44