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]: Talhowni and Aqeel Corporation v Tashera 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( �br>
Subject matter: Trademarks
Plaintiff: Talhowni and Aqeel Corporation
Defendant: Tashera Company
Keywords: Trademark, Unfair competition
Basic facts: The plaintiff, Talhowni and Aqeel Corporation, has used the trademark CAFÉ DU ROI since 1985. The trademark is registered under class 30. On October 31, 2005, the defendant, Tashera Company, filed to register a trademark of extreme similarity in pronunciation and appearance to the original trademark of the plaintiff. After the filing, registration was published in Jordan’s official gazette as CAFÉ DES ROIS; NO 83361 under class 42. The plaintiff submitted an objection to the defendant’s trademark. Upon acceptance of the objection by the Industrial Property Protection Directorate/Registrar of Trademark at the Ministry of Industry, Trade and Supply, the defendant was informed. Due to the lack of response from the defendant, the filing to register the trademark was dropped on March 12, 2007. On November 11, 2007, the plaintiff sent a legal warning to the defendant, demanding they remove a sign that uses the CAFÉ DES ROIS mark to identify a commercial establishment, as well as cease use of the trademark in their publications, inside their company, and in any promotional materials related to their company.
The defendant was informed of the legal warning through a supervising employee on November 6, 2009. As the owner of the trademark CAFÉ DU ROI, the plaintiff accused the defendant of acts of unfair competition. In addition, the defendant’s previous actions were alleged to cause confusion with the plaintiff’s establishment, its service, and its activities, thereby discrediting the service of the plaintiff.
Held: Based on its similarity to the plaintiff’s registered trademark (CAFÉ DU ROI), the Court barred the defendant from using the trademark CAFÉ DES ROIS in any shape or form, and ordered the defendant to remove the sign that uses this trademark to identify a commercial store.
Relevant holdings in relation to rules of evidence in intellectual property litigation: The plaintiff submitted information, represented by its certificate (Company Certification of Registration) proving its registration in the Jordanian Companies Register, as well as a trademark registration certificate for the CAFÉ DU ROI mark, demonstrating its registration in the name of the plaintiff in the Jordanian Trademark Register.
In addition, the plaintiff’s trademark certificate has been renewed and its registration is valid in Class 30, and a certificate issued by the Trademark Registrar proves that the defendant has applied to register a mark that is similar to the plaintiff’s mark. The plaintiff objected to this application, and the Trademark Registrar considered the defendant to have abandoned its application by not submitting a response statement to the objection.
The plaintiff submitted a judicial notice warning the defendant of the necessity of removing the trademark used to identify the defendant’s store. Since the use of the trademark constitutes an imitation of the plaintiff’s trademark, the judicial notice also urged the necessity of the defendant refraining from using the mark in advertising publications and anything else that distinguishes its service. The plaintiff also submitted pictures of the defendant’s publications and promotional leaflets to prove use of a trademark similar to the plaintiff’s trademark. The Court denied authorization for the technical expertise evaluation required to assess the plaintiff’s damages, citing lack of legal evidence proving the damage.
The defendant submitted a copy of its application to the Trademark Registrar at the Ministry of Industry, Trade and Supply to register a trademark similar (in wording and form) to the plaintiff’s trademark in Class 42, and a copy of the publication in Official Gazette No. 333 of the initial approval to register this trademark (CAFÉ DES ROIS) in the name of the defendant. However, the Court did not take this evidence into account, because the plaintiff submitted an objection to the registration of the defendant’s trademark CAFÉ DES ROIS with the Registrar of Trademarks at the Ministry of Industry, Trade and Supply, which in turn accepted the objection. The defendant was notified of the objection, and as a result of its failure to respond, the Trademark Registrar decided to consider the defendant to have abandoned its application to register the mark similar to the plaintiff’s mark. Accordingly, this evidence does not prove any right for the defendant to use the CAFÉ DES ROIS mark.
Relevant legislation:
Civil Code No. 43 of 1976
Law No. 33 of 1952 on Trademarks
Law No. 15 of 2000 on Unfair Competition and Trade Secrets