On January 12, 2017, the Administrative Circuit of the Board of Grievances (BOG) in Saudi Arabia issued a judgment in the opposition of FAST ČR, a. s. v Ministry of Commerce and Investment (Case No. 840/1/Q of 1438), where the opponent’s mark SENCOR, owned by Czech company, FAST ČR, a. s., was declared well-known in Saudi Arabia. The BOG directed the trademark office to refuse a third-party application to register a confusingly similar mark on dissimilar goods.
|Opponent’s Well-Known Mark
Registered in Classes 7, 8, and 11
|Opposed Mark under Application No.
1437023929 in Class 21
In arriving at the decision, the BOG noted that the opponent’s mark was well known in Saudi Arabia and that the applied-for mark was identical. The BOG declared that the opponent’s well-known mark was entitled to protection in order to prevent consumers from likelihood of confusion even though the conflicting marks were registered and filed in different classes. The opponent’s mark is registered in Classes 7, 8, and 11, whereas the opposed mark was filed in Class 21.
While comparing the goods claimed under conflicting marks, the BOG noted that they were similar. The claimed goods under Class 21 included household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel wool; unworked or semi-worked glass (except glass used in building); and glassware and porcelain. The claimed goods under Class 7 were mixers and choppers, and juicers and mills for household purposes [other than hand-operated], cleaning machines, and sewing machines. Under Class 8, they were hand tools and implements (hand-operated) and cutlery.
The judgment contributes to the growing list of cases in Saudi Arabia's trademark jurisprudence where the rights in well-known marks are being protected against unauthorized registration in relation to goods that may be dissimilar to the goods for which the given marks are well known.
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