Johnson & Johnson recently filed an application for the registration of the mark VELBAND in English for medical bands and bandaging materials in Class 5. The Trademark Office refused the application on the grounds of likelihood of confusion with the mark VELBAND in Farsi transliteration, which a local company, Bandhaye Pezashki Co, had already registered for orthopaedic plasters.

Johnson & Johnson sought cancellation of the Farsi VELBAND trademark. It alleged that it used the VELBAND trademark worldwide and had registered the mark in Italy some time before the defendant sought registration of the Farsi mark in Iran.

The defendant argued that the goods covered by its Farsi VELBAND mark were different from those for which Johnson & Johnson sought protection under the English VELBAND mark, and would not confuse the average consumer.

The court ordered the cancellation of the Farsi VELBAND mark, based on Johnson & Johnson's prior worldwide use of the English VELBAND mark and the fact that the defendant's use of the mark was an unfair competition issue.

Bandhaye Pezashki did not appeal the decision.

For further information on this topic please contact Mohammad Badamchi at HAMI Legal Services Inc by telephone (+98 21 204 36 84) or by fax (+98 21 204 36 86) or by email ([email protected]).