This is an informal case
summary prepared for the purposes of facilitating exchange during the 2023 WIPO IP
Judges Forum.
Session 6: Rules of Evidence in Intellectual Property
Litigation
Court
of First Instance, Amman, Jordan [2008]: Aowrgo Food and Befrg International
Company v Akhaa Arabia Company
Date
of judgment: May 20, 2008
Issuing
authority: Amman Court of First Instance
Level
of the issuing authority: First Instance
Type of procedure: Judicial (Civin( �o:p>
Subject matter: Trademarks
Plaintiff: Aowrgo Food and Befrg International Company
Defendant: Akhaa Arabia Company
Keywords: Trademarks, Unfair competition
Basic facts: The
first plaintiff is the owner of the well-known trademark BOOM BOOM, registered
for energy drinks in their name with the Industrial Property Protection
Directorate/Trademarks Registrar at the Ministry of Industry, Trade and Supply.
The BOOM BOOM trademark has been used by the plaintiff globally and in
Jordan for years, and it is registered in more than 30 countries. The
second plaintiff is the exclusive agent for importing, selling and distributing
the Boom Boom energy drink products. The products of the first plaintiff
are of a special nature in terms of distinctive design for the colors and their
gradations, which give a special characteristic relative to other similar
products, as the packaging was designed to attract the attention of the
consuming public.
The defendant is
accused of taking advantage of the fame of Boom Boom energy drinks in Jordan to
deceive and mislead the public into the belief that their product is the
original Boom Boom product. By importing, storing, selling and trading
goods bearing a trademark identical to the BOOM BOOM mark, the defendant is
alleged to have given the public the illusion that the goods sold are original,
leading the two plaintiffs to incur considerable damage and material losses.
Accordingly, the plaintiffs claim that the defendant’s acts constitute
trademark infringement and unfair competition, as they mislead the public and
cause consumer confusion in accordance with the provisions of the Law on Unfair
Competition and Trade Secrets, and the Law on Trademarks. The defendant
previously applied to register a BOOM BOOM trademark, but the application was
rejected due to the earlier registration of the first plaintiff’s trademark in
Jordan and numerous other countries.
Held: The Court convicted the defendant
for the crime of acquiring goods with the intent of selling and carrying a
forged trademark, contrary to the provisions of Article 37/1/c of the Law on
Trademarks. The Court ordered the goods imported by the defendant to be
confiscated and destroyed at the expense of the defendant.
Relevant
holdings: The plaintiff submitted a certificate (Company
Certification of Registration) proving its registration in the Jordanian
Companies Register, as well as a trademark registration certificate for the
BOOM BOOM mark, demonstrating its valid registration in the name of the
plaintiff in the Jordanian Trademark Register in Class No. 32 for beer, mineral
and carbonated water and other non-alcoholic drinks. In addition, the
plaintiff submitted a sample of the goods marked by its trademark, i.e., an
energy drink bearing the trademark (BOOM BOOM) (Boom Boom), numbering three
containers, as well as the seized sample, an energy drink bearing the trademark
(BOOM BOOM) (Boom Boom), numbering 24 containers. Finally, the
plaintiff’s attorney submitted a copy of the temporary measure decision issued
by the Second Intellectual and Industrial Property Rights Court in Istanbul,
and the plaintiff requested the authorization of technical expertise to
estimate the damage the plaintiff sustained as a result of the defendant’s
actions. However, because the plaintiff did not provide evidence of the
damage, the expert did not estimate compensation for the material damage.
The defendant
submitted a letter stating that it is a duly registered commercial agent for
the Turkish company Star Beverages, exclusively responsible for importing,
selling and marketing energy drink products that bear the BOOM BOOM trademark
from November 15, 2020, to November 14, 2025. The defendant also submitted
a copy of a trademark registration certificate to demonstrate that the BOOM
BOOM trademark is owned by Star Beverage Company and registered in Türkiye.
However, the Court did not take this evidence into account, finding that
since the plaintiff owns the trademark (BOOM BOOM) in Jordan, it is protected
within this territory, and any infringement is considered legally criminal
based on the provisions of the Law on Trademarks.
Because the
scope of criminal protection for a trademark is territorial, and as the Türkish
company did not register its trademark in Jordan, the defendant’s possession of
the goods bearing this trademark is in violation of the provisions of the
Jordanian trademark law.
Relevant
legislation:
Law No. 33 of 1952 on Trademarks
Law No. 15 of 2000 on Unfair Competition
and Trade Secrets