Adastra IP represented their client, WAIZURI MARKETING (M) SDN. BHD (the applicant), in the matter of Malaysian Trade Mark Application No. 2010000560 for WAIZURI & Crown Device in Class 30. The application was opposed by none other than ROLEX SA (Rolex) (the opponent), the renowned wristwatch makers.
Rolex opposed an application filed by our client Waizuri Marketing (M) Sdn Bhd, who are a manufacturer of cooking sauce and food additives against use of the “Crown Device”. In doing so, ROLEX’s main contention was that use of the crown device would cause confusion to the members of the public and damage to its well know reputation in the trademark.
Our client, on the other hand, filed its application in class 30 claiming for the following goods: sauces, ketchup, spices, pastry and confectionery; flour and preparations made from cereals. While, we conceded that Rolex’s crown device is a well-known in relation to luxury wristwatch, it was our contention that ROLEX always used their trade mark in a certain way, namely the word "ROLEX" was always accompanied with the Crown device. We also submitted that the name “Waizuri” originates from the company name WAIZURI MARKETING (M) SDN. BHD and the Crown device makes no reference to ROLEX and/or its Crown device. Therefore, it was argued that ROLEX does not have the relevant reputation in the Crown Device given that the word "ROLEX" was always used together with the Crown device. We also submitted evidence in the course of the proceedings of other trademark registrations in Class 30 which were represented with similar crown device.
Upon hearing the arguments, the Registrar issued a decision in favour of our client considering that:
1. The correct way of assessing a mark would be, “as a whole since what ordinary members of the public at large would see is the whole mark which includes both the device and word”. The registrar was of the view that the marks were not identical on the basis that the Applicant’s mark consisted of the word “WAIZURI” with the device of a crown and the Opponent’s mark entailed of the word “ROLEX” with the device of a crown.
2. On the aural aspect, the risk of confusion was less. Based on ‘word talk principle’ words speaks louder in a trademark as opposed to the device in itself. When consumers look at the Application Markm the phrase “WAIZURI” will speak for itself.
3. Further actual circumstances of case needs to be compared i.e. the nature and use of the goods, the kind of customers that buys the goods, the trade channel in which the goods were sold and the impression given by the marks.
4. Well known nature of the Opponent’s mark was limited to luxury goods and it has no connection with food products. The Registrar was of the view that “public will not believe that there exist a connection between the Applicant’s and the Opponent’s products. There is also no damage to the interest of the Opponent nor any evidence given by the Opponent to support that contention”
This decision clearly illustrates that although a trademark is well known, it does not necessarily offer a blanket right to prohibit others from using certain non-distinctive features in relation to an unrelated industry. At least in this matter, the Waizuri were successful in retaining their crown!
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