Principles

·  TRADE MARKS — Egyptian trade marks -- Not protectcd unless registered here.

·  TRADE MARKS — Infringment — Foreign language equivalent of Arabic not an infringement considering customers of perfume involved.

Applicant registered the trade mark of a perfume, “Bienaime”, in  Egypt, and the Arabic equivalent, رائحة الحبيبة الشبراويشى   in the Sudan. Respondent applied to register “Bienaime” in the Sudan. Applicant brought this application in opposition to the registration of respondent trade mark.
Held: (i) The applicant has no cause of action to oppose registration of a trade mark on grounds that he has an identical trademark registered in Egypt.

(ii) Taking into consideration all factors including the category of customers involved, the trade mark in French “Bienaime” is not likely to deceive purchasers of the perfume trade marked with a similar name written in Arabic.

Judgment

Advocates: Ahmed Mohamed Fadl………………. for petitioner

Abdulla Nagib………………………………….. for respondent

Abdel magid Imam, J., December 26, 1962:— This is an application of opposition made under Trade Marks Ordinance 1930, s. 10. It is Iso an successful attempt to make out a case for the protection of a foreign trade mark registered in a foreign country and also a hopeless attempt to make a case of passing off as it was admitted that the mark or marks in question were not used in connection with any goods for the last two years or more.

The applicant Hamza Mohamed El Chabrawashi lodged this application of objection under trade Marks Ordinance 1930, s. 10 against an application for registration of the respondents’ Trade Mark No. 6137 under Class 48 published in the Sudan Gazette No 494 on August 15, 1960, on the grounds that the said trade mark is identical with or resembling the applicant’s registered trade mark which is registered both in Cairo and the Sudan under No. 8162 and No. 4546 respectively

the. trade mark of respondents Sudan Perfumery Company Ltd., consist of the French word ‘Bienaime’’. i’he applicants were the proprietors of a registered trade mark in Egypt consisting of the word “Bienaime”. they are also the registered proprietors in the Sudan of the Arabic words رائحة الحبيبة الشبراويشى It was contended on behalf of the applicants that their Egyptian registered trade mark is protected by the Sudan Laws. No  mention was made of any specific piece of legislation in this respect.

the following Issues were framed at page 9 of the record:

(a) Have applicants been the owners of a registered perfumery trade mark (in Cairo), consisting of the following letters, “Bienaime,” and registered under Egyptian Law since September 20, 1953?

Onus on applicants

(b) And if so, is this material to the cause of action?

Onus on applicants

(c) Are applicants the owners of a Sudan registered trade mark in Arabic رائحة الحبيبة الشبراويشى  bearing the same meaning of the French word Bienaime and registered under No. 4546 ?

Onus on applicants

(d)  And if the answer to both (b) and (c) above is yes, is the respondents’ trade mark identical with or resembling the applicants’ registered trade mark?

Onus on applicants

(e) And if so, is it calculated to deceive customers into the belief that it is the plaintiffs’ goods?

Onus on applicants

An additional issue of law was framed at page 15 of the record in con nection with applicants’ mark registered in Egypt as follows

Issue: Is the applicant entitled under the Ordinance to object to respondents’ application for registration of his mark; and in connection with his, applicant’s, trade mark “Bienaime” which is registered in Egypt and not in the Sudan?

Onus on applicants

As I see it, this application should fail in connection with both of applicants’ trade marks. As for the one registered in Egypt under the French word “Bienaime,” it has been proved and admitted by the applicants that this mark was not used in connection with any goods, for the last two years or more and from the evidence of their agent it may be gathered that it was not used in connection with any imported goods at all. He said at page 17 of the record:

            “I cannot tell whether the importers asked for “Beinaime” or “El Habiba” when they made their order in Exhibit P.3.”

Trade Marks Ordinance, 1930, s. 6(9) reads:

“The following are not capable of registration as trade marks:

“A mark identical with one belonging to a different proprietor which is already on the register in respect of such goods, or so nearly resembling such Trade Mark as to be calculated to deceive.” (Italics added)

It is clear that this sub-section makes it a condition for that the mark of the different proprietor must have already been in the register. It can be seen that this condition is fulfilled as regards applicants’   trade mark “رائحة الحبيبة  “ but not as regards their mark “Bienaime”. It can also be said that sub-section 4 to the same section is not applicable in this particular case. And as there was no claim based on a passing off action in view of the admission8 made by the applicant concerning the non-user of the said marks, the trade mark “Bienaime” is not protected under the Ordinance or under any other law

As for this word “ رائحة الحبيبة  “ it seems that applicant is relying upon section 6(9) above-mentioned, i.e., that the respondent’s trade mark “Bienaime” is identical with or so nearly resembling their trade mark رائحة الحبيبة as to be calculated to deceive. There is no question of identity in appearance as one of the words is written in French and the other in Arabic. The identity or resemblance claimed is in the meaning of these words. Applicants’ agent states at page 17:

            " I am objecting because if you translate the word “Bienaime” it be comes “El Habiba ....“

Evidence was adduced to prove that this is not so. (See the evidence of D.W.1, pages 20 and 21 of the record.) This witness stated that the exact meaning of the word “Bienaime” is محبوب جداَthe feminine of which is “Bienaime”, محبوب جداَ with an additional “e” at the end. The meaning of “الحبيبة  “ in French is “L’amoureuse.” Against this positive statement, the applicants’ agent gave a shaky one. He said at page 17:

“          It is my opinion that no exact translation can be had in Arabic; it can be either El Habiba or El Mahhouba.”

From the above it can safely be stated that there is no identity regard ing the meanings of these words, though there may be some similarity. In this connection the question of similarity or resemblance is not the deci sive factor; all the circumstances must be taken into consideration, first and foremost the category of the customers. Evidence was adduced by the respondents that “Bienaime” would be a costly refined brand which it is intended to sell to a certain refined and elite category of people; the category of people who would ask for “Bienaime” and would do so in French and most probably using the correct accents D.W.l gave evidence in this respect. He said:

“If I want to buy this perfume I will say the word in French and not in Arabic.”

Such a category is not likely to be deceived when a bottle of perfume is presentedto them bearing the mark,” الحبيبة

For the above reasons the application fails. The registrar of Trade Marks is hereby ordered to proceed with the registration of the respondents’ trade mark “Bienaime” as published.

The respondents are allowed £S.15 in costs.