Seema S Mansoor January 21 2019 Totality of impression and test of average consumer in trademark infringement Vellani & Vellani | Intellectual Property - Pakistan Seema S Mansoor Intellectual Property FactsMoonlite Trading's contentionsMF Enterprises' responseDecisionThe Sindh High Court recently overturned a registrar of trademarks' decision following an appeal by Moonlite Trading (owners of the COBRA trademark) and rejected MF Enterprises' application to register its infringing mark (FASTER BLACK COBRA).(1)FactsMoonlite Trading is a merchant and importer of consumer goods, including toiletries, lotions, perfumes, deodorants, air fresheners, nappies and insecticides, sold under various brands that it has developed in Pakistan. Its Cobra brand has been a registered trademark since 11 August 1988 for insecticide products and has been sold in Pakistan since 1988.MF Enterprises imports, manufactures and sells products, including Faster Black Cobra, and applied to register the FASTER BLACK COBRA mark in 2010.Moonlite Trading filed an opposition on the ground that the FASTER BLACK COBRA mark was identical to its COBRA mark and, as such, was likely to deceive or cause confusion among consumers regarding the origin of the goods.MF Enterprises filed a counter claim that:it had adopted its mark in 2009 to distinguish its goods from competitors; andits mark FASTER BLACK COBRA was distinguishable from Moonlite Trading's COBRA mark and qualified for registration.In January 2014 Moonlite Trading became aware that MF Enterprises, in connivance with other parties, had started using the FASTER BLACK COBRA mark and filed a suit for infringement, passing-off, unfair competition, declaration and permanent injunction against the respondent and obtained an ex parte ad interim injunction order on 3 February 2014 restraining it from using said mark. During the court and opposition proceedings, MF Enterprises illegally obtained registration of its mark.Moonlite Trading filed an application to invalidate the FASTER BLACK COBRA mark as required by the court order in said suit. The FASTER BLACK COBRA mark was held to be null and void and the registrar of trademarks was required to proceed with the opposition proceedings and pass a speaking order within 30 days.The registrar of trademarks disallowed Moonlite Trading's opposition through an order dated 7 August 2017 and allowed MF Enterprises' application for the FASTER BLACK COBRA mark (280917), with the disclaimer that the word 'cobra' and all descriptive words, letters and devices appeared on product labels.Moonlite Trading filed an appeal against the registrar of trademarks' decision.Moonlite Trading's contentionsMoonlite Trading claimed that:the registrar of trademarks had incorrectly allowed the confusingly similar mark FASTER BLACK COBRA to proceed to registration;the order in question had been passed ignoring the specific facts and circumstances of the case and Section 17 of the Trademarks Ordinance 2001 had been wrongly applied;its registered trademark COBRA had been in use since 1987 and had a large consumer following in Pakistan;the earliest registration of the trademark COBRA had been acquired in 1988;the registrar of trademarks had failed to consider the imitative nature of the FASTER BLACK COBRA mark and Moonlite Trading's prior owned COBRA mark;the registrar of trademarks had failed to consider that the products in question were both insecticides; andthe registrar of trademarks had ignored and misconstrued orders by the court, wherein the judge observed that the FASTER BLACK COBRA mark was nearly identical to the COBRA mark and in violation of the trademark law.MF Enterprises' responseMF Enterprises argued that:it had followed all formalities required to register its FASTER BLACK COBRA mark;the Faster Black Cobra product had been sold since 2009 and MF Enterprises had invested a substantial amount of money in its advertisement;Moonlite Trading had known about MF Enterprises' product since 2009 but had only filed a suit in 2014 and obtained an ex parte ad interim injunction order to restrain MF Enterprises from using its FASTER BLACK COBRA trademark;the word 'cobra' is descriptive, suggestive and common to trade in relation to insecticides and herbicides and many parties use the term to sell insecticides in Pakistan and therefore no confusion had been caused to any party; andthe registrar of trademarks had rightly passed an order to allow MF Enterprises to register its FASTER BLACK COBRA mark.DecisionThe Sindh High Court decision applied the concept of totality of impression and the average consumer test to ascertain whether the registration of the FASTER BLACK COBRA trademark would infringe Moonlite Trading's registered trademark (COBRA).The main guiding principle to examine the genuineness of MF Enterprises' request to register its mark was to compare it with Moonlite Trading's COBRA mark. After a careful comparison of samples of both products, the court concluded that the concept of totality of impression and the average consumer test as recorded by the registrar of trademarks had been misconceived and erroneous.The High Court held that similarities between the two products were sufficient to cause confusion among ordinary consumers. As a result, it allowed the appeal and set aside the registrar of trademarks' order.MF Enterprises filed an appeal before the Supreme Court of Pakistan against the High Court order and it was suspended by the Supreme Court on 5 March 2018 for reasons which are awaited. Moonlite Trading has also filed a review application before the Honourable Supreme Court which is pending adjudication.For further information on this topic please contact Seema S Mansoor at Vellani & Vellani by telephone (+92 21 3580 1000) or email ([email protected]). The Vellani & Vellani website can be accessed at www.vellani.com.Endnotes(1) Aman Ellahi v Registrar of Trade Marks (2018 CLD 823).