It’s not often that we get an opportunity to report on trade mark decisions in Mauritius. So it is with some pleasure that we report on the Controller’s recent decision in the matter of an opposition to the trade mark Delinte.
The facts were that a Chinese company, Qingdao Sentury Tire Co Ltd (Qingdao), applied to register the trade mark Delinte for tyres. An Indonesian company, PT Industri Karet Deli (PT), filed an opposition to the application. The opposition was based on prior rights to the trade marks Deli Tire and Delium.
In the notice of opposition PT claimed that it is the owner of the tyre trade marks Deli Tire and Delium. Both these trade marks are registered in Mauritius in a logo form (both with the same stylized letter ‘D’), Deli Tire since 2011, and Delium since 2013. PT claimed that it sells tyres under these trade marks in many countries including Mauritius. It made the claim that both trade marks are ‘extremely well known’ in the context of tyres. And it argued that they are ‘well known trade marks’ as understood by Article 6 bis of the Paris Convention and Article 16.2 of TRIPS, and therefore entitled to protection in Mauritius in terms of Section 36(2) (e) of the Patents, Industrial Designs and Trademarks Act 2002 (the Act), which gives protection to well-known trade marks in Mauritius.
PT went on to claim that there would be confusion because of the visual and phonetic similarities between the trade marks, and because the goods are identical. On the issue of similarity, PT pointed to the fact that the common feature – the word ‘Deli’ -is the dominant and distinctive feature of the two sides' trade marks. It spoke about the concept of imperfect recollection, and said this: ‘Imperfect recollection can easily create an amalgam between Delinte and Deli Tire or Delinte and Delium.’ PT said that Qingdao’s unauthorised use amounted to an ‘unfair practice’ in terms of legislation known as the Protection against Unfair Practices (Industrial Property Rights) Act 2002. It said that the application for Delinte should be refused under sections 32(2) (b) (e) and (g) of the Act.
In response Qingdao gave some background, saying that the company was established in 2009, that its mission is to be a ‘world class tire brand’ , that its products meet all the industry standards, that it has a sales network in over 150 countries, and that it is now a ‘world famous tire manufacturer’. It went on to explain that it has three major brands - Landsail, Delinte and Sentury. Dealing specifically with Delinte, Qingdao said that the trade mark was ‘honestly and bonafidely adopted’ in 2010, that the company had filed applications to register the trade mark in some 34 countries including Japan and the USA, and that the trade mark Delinte has become well known.
Dealing with the issues raised in the opposition, Qingdao made the point that, although PT had claimed that its trade marks Deli Tire and Delium are well known, it had furnished no actual proof of this alleged renown. On the issue of confusion, Qingdao said that there were clear visual and conceptual differences between the trade marks, and also important aural differences. It explained this by saying that, whereas Delinte consists of three syllables, each with a ‘distinctly soft sound’, the other trade marks each consist of two syllables, with each syllable being ‘emphatic’. It said this: ‘The marks at issue thus have a markedly different length, vowel structure, rhythm and intonation, and there is no degree of visual, phonetic and conceptual similarity’. It said that PT had ‘miserably failed to make out a fit and proper case’. It described the opposition as being ‘manifestly inadmissible and unfounded’ and ‘an abuse of the due process of law’.
In her decision of 30 March 2015, the Controller agreed with Qingdao, holding that Deli Tire and Delium are not so similar to Delinte that ‘there will exist a likelihood of confusion on the part of the public which would include the likelihood of association. ’ The opposition was dismissed.