As a part of our constant endeavor to keep our readers abreast of the current issues faced in our jurisdctions we are pleased to provide a legal brief on a recent case dealt by our firm in Qatar. Our client “SİMİT SARAYI YATIRIM VE TİCARET ANONİM ŞİRKETİb” is a Turkish company and the original owner of the trademark “SİMİT SARAYI” registered in home and foreign countries in class 30 and was faced with a matter of trademark squatting in Qatar.
A Qatari company has succeeded in obtaining prior registration for the same mark as well as the trade name “SIMIT SARAYI” in an attempt to block any trademark/trade name registration of our client in Qatar.
Following our client’s instructions, we have filed a cancellation action (on bad faith) against the registration of the mark and Trade name.
The legal case was initiated on the following grounds:
- The applicant/registrant knew of the third-party’s rights or legitimate interests in a mark identical to or substantially identical to the mark applied for/registered, where such knowledge is actual or may be inferred from the surrounding circumstances; and
- The applicant/registrant’s conduct in applying for/registering the mark is inconsistent with norms of reasonable, honest, and fair commercial behavior.
- The applicant/registrant’s is not using the mark and trade name in Qatar.
The case has been ruled in favor of our client as the court called for the cancellation of both the defendant mark and trade name.
To conclude, Qatari trademark law and practice grant protection to well-known trademarks which have been targeted by third parties (on bad faith bases), even if the trademark in question has not been previously registered in Qatar.
In this perspective, we should emphasize that Qatar has a smooth opposition system and bad faith trademark applications will be rejected by the Trademark Office, if opposition is filed by the genuine rights holder. However, in spite of this many such registrations do occur and most detrimentally when the well -known mark owner plans to enter Qatar; the only option to be availed being the canceling of the existing bad faith registration.