Protection of the Translation of Well-Known Marks under Jordanian

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					European Journal of Social Sciences – Volume 19, Number 2 (2011)



      Protection of the Translation of Well-Known Marks under
       Jordanian Trademarks Law: Concurrent Actions, Same
       Litigants, Same Cause of Action, Different Countries and
     Similar Finding: Case of Contradiction in the Jordanian and
                           Arab Judiciary

                                             Basem M. Melhem
                      Assistant Professor of Commercial Law and Intellectual Property
                                    University of Jordan, College of Law
                                         E-mail: melhem@ju.edu.jo

                                                  Abstract
        Translating trademarks from foreign languages into the Arabic language has become a
        common phenomenon in the Arab world. Recently, courts in many Arab states have been
        dealing with concurrent actions, the same litigants, the same cause of action but eventually
        conclude with different rulings. This highlights a case of contradiction in the Jordanian and
        Arab Judiciary. In order to further explore this issue, the paper will study the case of Mars
        Incorporated v. Iraqi Company. The plaintiff Mars Incorporated brought several actions
        against the Iraqi Company claiming that the latter has committed infringements by
        translating its well-known marks (Mars, Galaxy, Milky way and Jewels) into the Arabic
        language (Merrikh, Majarra, Darb-Labena and Jawaher) respectively. The defendant Iraqi
        Company rejected Mars Incorporated's allegation claiming that the Iraqi Company is the
        first who created the idea of using the Arabic names of planets, universes and zodiacal
        signs known since thousands of years by two of the greatest civilizations Ancient Egypt and
        Mesopotamia (Ancient Iraq). This paper will examine this controversial issue in light of the
        protection of the translation of well-known marks as stipulated in the Jordanian Trademarks
        Law and the International Conventions keeping into consideration the case of contradiction
        in the Jordanian and Arab judiciary.


        Keywords: Protection of well-known trademarks, protection of translation of trademarks,
                  Concurrent actions, same litigants, same cause of action, Jordan, Jordanian
                  High Court of Justice, Jordan judiciary, Arab Judiciary.

Introduction
Jordan has been a member of WTO since April, 11 2000 after fulfilling all the requirements for its
membership such as the Accession Protocol which became a part of the (Law of Ratification of
Jordan's Accession to the World Trade Organization No. 4 for the year 2000)1 by the Jordanian
competent authorities. Consequently, Jordan had to undertake several reforms to comply with the
WTO Agreements which are: (The General Agreement on Tariffs and Trade (GATT)2, (The General

1
    This Law was published in the Jordanian Official Gazette issue No. 4415, dated 24/02/2000, page No. 710.
2
    http://www.wto.org/english/tratop_e/gatt_e/gatt_e.htm. See Professor Mohamed Hossam Lutfi, (14-15 of December
    2002) Paper presented in The Legal and Economic Aspects in International Trade Agreements Conference, Ain Shams
    University, Cairo.
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Agreement on Trade in Services (GATS)3 and (Trade-Related Aspects of Intellectual Property Rights
(TRIPS))4.
        Subsection 1.3 of the TRIPS Agreement obliges WTO member countries to comply with the
following international agreements (Paris Convention (1967)5, (Berne Convention (1971)6, (Rome
Convention)7 and (Treaty on Intellectual Property in Respect of Integrated Circuits)8 to which Jordan
is a party.
        In tune with the minimum requirements and standards of the TRIPS Agreement9, Jordan
introduced remarkable amendments to its legislations related to intellectual property rights.10 This
paper will particularly focus on the issue of the protection of well-known marks and their translation.
Therefore, it is important to provide a brief general background on the legal developments of the
protection of trademarks which are expected to bring significant changes to prevailing practices.
        The Trademark Law 1999 introduced remarkable amendments to the Trademarks Law 195211
whereas the amending Law 1999 contains statutory provisions concerning the registration and the
protection of services12 and collective marks,13 the assignment of marks independently from business14.
Additionally, the duration of the protection was extended from seven to ten years and maybe renewed
for an equal period.15 The law also stated provisions on the protection of well-known marks.16
        This paper is divided into three sections. First, it examines the protection of well-known
trademarks and their translation under the International Conventions. Secondly, it studies the nature
and scope of the protection of well-known marks and their translation under Jordanian Law. Thirdly,
analyzes the case law related to the alleged infringement when translating well-known trademarks
which represents a case of contradiction in the Jordanian and Arab judiciary. Finally, the conclusion of
the article will relate the finding to each other in a coherent way and suggest practical solutions to
some pitfalls of the current issue.




3
   http://www.wto.org/english/tratop_e/serv_e/serv_e.htm visit on July, 12/2010.
4
   See. Hussam Al-Deen Al-Saghir, (2004, 1st Edition) Al-Jadeed in Trademarks in the light of the New Intellectual
   Property Law and Trips Agreement, (Dar-Al-Fikr Al-Jamaai) pp.100 -110). Salah Zeen Al-Deen, (2006 Second issue, 1st
   edition) Introduction to Intellectual Property, (Dar Althagafa, Amman) p.128.
5
   This obligation is subject to article 2.1 of TRIPS Agreement (…Member countries are obliged to comply with articles (1-
   9) and article (19) of Paris Convention (1967). Jordan joined Paris Convention on July 1972.
6
   Article 9.1 of TRIPS Agreement provides that members shall comply with Articles 1 through 21 of Berne Convention.
   Jordan joined Berne Convention on July 1999.
7
   Article 1.3 of TRIPS Agreement provides that members shall comply with Article 5.3 or Article 6.2 of the Rome
   Convention.
8
   Article 35 of TRIPS Agreement provides that members shall comply with the provisions of Articles (2 through 7) ( other
   than paragraph 3 of Article 6), Article 12 and paragraph 3 of Article 16 of the Treaty on Intellectual Property in Respect
   of Integrated Circuits "Washington"
9
   David Palmeter & Petros C. Mavrodise, Dispute Settlment in the World Trade Organization, Cambridge, p.12.
10
   Copyright Law, Geographical Indications Law, Industrial Design & Models Law, Integrated Circuits Law, Patent of
   Innovation Law, Plant Varieties Law, Trademarks law, Undisclosed Information and Unfair Competition Law and Trade
   Secrets. See full details about these amendments: Abdulla Nawafleh, "Development of Intellectual Property Law and
   Foreign Direct Investment in Jordan". Journal of International Commercial Law and Technology. Vol.5 Issue 3 (2010).
11
   his Law was published in the Jordanian Official Gazette issue No. (1110) dated 1/6/1952, page No. 243 and was amended
   by Law No. (25) of 1957, Law No. 34 of 1999, Law No. 29 of 2007 and Law No. 15 of 2008.
12
   Trademarks Law No. 33 of 1952 and its Amendments. Section (7).
13
   Ibid, section 10.
14
    Ibid, section 19.
15
   Ibid, section 20 (1).
16
   Ibid, section 8 (12).
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1. The General Principles of Protection of Well-known Marks and Their
Translations under the International Conventions and WIPO Joint
Recommendations
The international protection of well-known marks is recognized in two multilateral treaties: the Paris
Convention for the Protection of Industrial Property (Paris Convention) and the Agreement on Trade-
Related Aspects of Intellectual Property Rights (TRIPS Agreement).

1.1. Paris Convention
The Paris Convention provides an independent provision that addresses the protection accorded to
well-known marks due to their importance that go beyond national boarders.17 Article 6bis of the Paris
Convention provides that the member states agree "to refuse or to cancel the registration, and to
prohibit the use, of a trademark which constitutes a reproduction, an imitation, or a translation, liable to
create confusion, of a mark considered by the competent authority of the country of registration or use
to be well known in that country as being already the mark of a person entitled to the benefits of this
Convention and used for identical or similar goods. These provisions shall also apply when the
essential part of the mark constitutes a reproduction of any such well-known mark or an imitation
liable to create confusion therewith".
        It is obvious that the protection afforded by the article 6bis to trademarks that are well-known
in a specific state is a protection against a registration or use of trademarks on identical or similar
goods that constitute a reproduction, imitation or translation liable to create confusion of a well-known
trademark or part of it. Thus, section 6bis of the Paris Convention sets an international primary level of
protection for trademarks that are well-known trademarks. But it is recognized that the Paris
Convention has some shortcomings in some important aspects related to what constitutes a well-known
trademark, where there are no specific standards to determine a trademark that is well-known in the
country where protection is sought. So, the evaluation of the standards whether a mark is a well-known
or not is left to the competent authority of the country where protection for registration or use is
required. In addition, the scope of protection covers only marks distinguishing goods not services and
registration and use of marks in respect to identical or similar goods.18

1.2. TRIPS Agreement
The WTO created TRIPS Agreement based on the shortcoming of the provisions of the Paris
convention related to trade and other issues related to commerce, as well as due to the need for
necessary modifications on the protection of Intellectual property rights in general and Trademarks
specifically. As it has been mentioned above, Paris Convention sets an international primary level of
protection for well-known trademarks. The TRIPs Agreement confirmed the provisions of the Paris
Convention related to the protection of well-known marks taking into consideration the necessary
modifications.




17
   See Sammeha Al-Galuobi, (2005, 1st Edition) Industrial Property According to the Provisions of Protection of Intellectual
   Property Law No. 82 2002 and its Regulations and Trips Agreement, (Dar Al-Nahtha Al-Arabia, Cairo). p.461. Mohamed
   Hussam Lutfi, (14-15 of December 2002) Paper presented in The Legal and Economic Aspects in International Trade
   Agreements Conference, Ain Shams University, Cairo. See also Sameer Bali & Nori Jmo : " Al-Mawsoaa Al-Ilmiah fi
   Al-alamat Al-Fariqah Al- Tijariah" (2007, 1st Edition) (Al-Halabi Legal Publication, Lebanon). P. 65.
18
   Stylianos Malliaris, Protecting Famous Trademarks: Comparative Analysis Of Us And Eu Diverging Approaches -- The
   Battle Between Legislatures And The Judiciary Who Is The Ultimate Judge? Chicago-Kent Journal of Intellectual
   Property, 2010, p. 49.
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        Article 16 (2)19 (3)20 embraces provisions that extend the scope of protection of Article 6bis of
Paris Convention to include marks distinguishing services. Thus, TRIPs addressed the shortcoming in
Paris Convention which its protection covered only goods.21
        As a result of confusion and disagreement among member states about the standard of whether
a mark is well-known or not because of the ambiguous provisions of the Paris Convention, TRIPs
provides a general guide to assist the competent authority in determining whether a trademark or
service is a well-known trademark or not. In this regard it provides that:
        "In determining whether a trademark is well-known, Members shall take account of the
        knowledge of the trademark in the relevant sector of the public, including knowledge in
        the Member concerned which has been obtained as a result of the promotion of the
        trademark".
        To this effect, TRIPS Agreement does not require in determining whether the trademark or
services mark is well-known- the knowledge of the public at large, it is enough that mark is well
known by the relevant sector of the public (example, the relevant sector for spare parts of computers
shall be engineers, technicians and mechanics.22 It should be noted that in certain cases, the relevant
sector of the public might be the public at large, for example, as regards certain types of consumer
goods such as purchasers of TVs, mobiles, cars, etc..)
        Furthermore, TRIPs Agreement expands the protection of well-known marks afforded by
article 6bis of the Paris Convention to embrace non-competing goods. In other words, TRIPs
Agreement expands its protection to apply to goods and services which are not similar to those in
respect of which a trademark is registered subject to two conditions:
          1. The use of that trademark in relation to those goods or services would indicate a
              connection between those goods or services and the owner of the well-known trademark.
          2. The interests of the owner of the registered trademark are likely to be damaged by such
              use.
        It should be noted that the protection under Article 16 (3) of TRIPs Agreement exceeds the
normal protection under the principle of specialty. The principle of specialty is a principle of trademark
law which protects a trademark used only on similar goods and covered by the registration. Thus, the
use by third parties of the marks Mercedes, Toyota and Ferrari will not be allowed, even for the
purpose of distinguishing different class of products or services.23 But, it should bear in mind that the
afforded protection by sub-article (3) can be extended to the non-competitive goods and services only
when trademarks are registered.

1.3. WIPO Joint Recommendations for the Protection of Well-Known Marks
Both Paris Convention and TRIPS Agreement do not provide a clear-cut criteria to determine the
nature of the mark's fame and what is meant by the relevant sector of public. This led to a lot of debate
among the member states which broached the matter with WIPO in seeking a clarification for the
issues in question. Therefore, WIPO responded to that and presented what is called the Joint
Recommendation Concerning Provisions on the Protection of Well-Known Marks, which includes the

19
   "Article 6bis of Paris Convention (1967) shall apply, mutatis mutandis, to services. In determining whether a trademark is
   well-known, Members shall take account of the knowledge of the trademark in the relevant sector of the public, including
   knowledge in the Member concerned which has been obtained as a result of the promotion of the trademark".
20
   "Article 6bis of the Paris Convention (1967) shall apply, mutatis mutandis, to goods or services which are not similar to
   those in respect of which a trademark is registered, provided that use of that trademark in relation to those goods or
   services would indicate a connection between those goods or services and the owner of the registered trademark and
   provided that the interests of the owner of the registered trademark are likely to be damaged by such use".
21
    See Abdel Fattah Biome Hijazi, Industrial Property in Comparative Law, (Arabic Version) Dar Elfikrelgamie,
   Alexandria, p. 247.
22
   Supra note 17, p50.
23
   Clark W Lackert & Marren C Perry, (2008) Protecting well-known and Famous marks: a global perspective, Publication
   of King & Spalding LLP, IP Value 2008, p.64.
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text of the provisions as adopted by the Standing Committee on the Law of Trademarks, Industrial
Designs and Geographical Indications (SCT ).24
        However, the Joint Recommendation provides in its preface that the Assembly of the Paris
Union for the Protection of Industrial Property and the General Assembly of the World Intellectual
Property Organization (WIPO) recommend that each Member State may consider the use of any of the
provisions adopted by the Standing Committee on the Law of Trademarks, Industrial Designs and
Geographical Indications (SCT) at its second session, second part, as guidelines for the protection for
well-known marks.
        These recommendations are embodied in three Articles related to the well-known marks out of
five Articles. Article 2 (1) (b) of the Recommendations provides a guideline for the member states of
the Paris Union determining whether a mark is a well-known mark by a member state competent
authority25 according to the following factors of consideration: 26
          1. the degree of knowledge or recognition of the mark in the relevant sector of the public;
          2. the duration, extent and geographical area of any use of the mark;
          3. the duration, extent and geographical area of any promotion of the mark, including
              advertising or publicity and the presentation, at fairs or exhibitions, of the goods and/or
              services to which the mark applies;
          4. the duration and geographical area of any registrations, and/or any applications for
              registration, of the mark, to the extent that they reflect use or recognition of the mark;
          5. the record of successful enforcement of rights in the mark, in particular, the extent to
              which the mark was recognized as well known by competent authorities;
          6. the value associated with the mark.
        In addition to the factors above, Article 2 (1) (a) requires the competent authority to take into
account any circumstances from which it may be inferred that the mark is well known.
        As far as the controversial issue related to the relevant sectors of the public is concerned,
Article 2 (2) of the Recommendations provides that the relevant sectors shall include, but shall not
necessary be limited to:
           (i) actual and/or potential consumers of the type of goods and/or services to which the mark
               applies;
          (ii) persons involved in channels of distribution of the type of goods and/or services to which
               the mark applies;
         (iii) business circles dealing with the type of goods and/or services to which the mark
               applies".
        Under Article 4 of the Joint Recommendations a mark will be deemed to be in conflict with a
well-known mark where that mark, or an essential part thereof, constitutes a reproduction, an imitation,
a translation, or a transliteration, liable to create confusion, of the well-known mark, if the mark, or an
essential part thereof, is used, is the subject of an application for registration, or is registered, in respect
of goods and/or services which are identical or similar to the goods and/or services to which the well-
known mark applies.
        (b) Irrespective of the goods and/or services for which a mark is used, is the subject of an
application for registration, or is registered, that mark shall be deemed to be in conflict with a well-
known mark where the mark, or an essential part thereof, constitutes a reproduction, an imitation, a

24
   WIPO Recommendations for the protection of well-known marks, publication No. 833(E) adopted by the Assembly of
   the Paris Union for the Protection of Industrial Property and the General Assembly of the World Intellectual Property
   Organization (WIPO) at the Thirty-Fourth Series of Meetings of the Assemblies of the Member States of WIPO
   September 20 to 29, 1999 World Intellectual Property Organization Geneva 2000.
25
   Article 1 of the Joint Recommendation defines "Competent Authority as: "competent authority” means an administrative,
   judicial or quasi-judicial authority of a Member State which is competent for determining whether a mark is a well-
   known mark, or for enforcing the protection of well-known marks".
26
   The standing Committee set Explanatory Notes for the provisions of the Joint Recommendations. See
   http://www.wipo.int/about-ip/en/development_iplaw/pub833-toc.htm#TopOfPage, visit on August, 03, 2010.
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translation, or a transliteration of the well-known mark, and where at least one of the following
conditions is fulfilled:
    (i) the use of that mark would indicate a connection between the goods and/or services for which
        the mark is used, is the subject of an application for registration, or is registered, and the owner
        of the well-known mark, and would be likely to damage his interests;
   (ii) the use of that mark is likely to impair or dilute in an unfair manner the distinctive character of
        the well-known mark;
  (iii) the use of that mark would take unfair advantage of the distinctive character of the well-known
        mark.27


2. Protection of a Well-Known Mark and its Translation under Jordanian Law
It is recognized that the protection of well-known marks in the Jordanian legal system was introduced
for the first time by the Amending Law of 1999 to become in conformity with the requirements and
standards of TRIPs Agreement.28

2.1. Definition of a Well-Known Mark
A well-known mark is defined under Article 2 of the Jordanian Trademarks Law which provides that:
        "The Well-Known Mark: The mark with a world renown whose repute surpassed the
        country of origin where it has been registered and acquired a fame in the relevant sector
        among the consumer public in the Hashemite Kingdom of Jordan".
        It is obvious from the definition above that the Jordanian Legislator undertook the task of
setting the definition of the well-known mark, though usually such task is undertaken by the judiciary
and jurists. Clearly, the definition of the well-known trademark under article 2 of the Jordanian Law is
imperfect as it doesn’t indicate to the meaning of the "mark with a world renown" which has gone
beyond the origin country of the mark and the "relevant sector". Thus, article 2 does not establish any
criteria to determine whether a mark is a well-known mark and the meaning of relevant sector of
Jordan's population.29 Consequently, the matter left to the discretion of the Jordanian Judiciary and
other competent authorities "where led to some contradiction in many decisions".30 (It will be
discussed later).
        Despite the criticism directed at the Jordanian legislator by some writers that he provided an
ambiguous definition for the well-known mark by not specifying the nature of fame and relevant sector
of public. In the author's view, the legislator may have deliberately provided a broad definition leaving
the issue to the judiciary and the competent authorities to develop criteria according to relevant
circumstances and the guidelines of the WIPO Joint Recommendations.

2.2. Scope of Protection of the Well-Known Mark and its Translation
The Jordanian Trademarks Law adapted the provisions of article (16) of TRIPS Agreement in relation
to the protection of well-known marks. The protection of well-known marks is provided under two
Articles in the Jordanian Trademarks Law: Article 12 (8) and Article (26).
        Article 8 (12) provides that:


27
   The WIPO Joint Recommendation is not binding but it affords a guideline only.
28
   See pages 1-2 above for the main features of the amending Law No. 34 1999.
29
   Both Paris Convention and TRIPS Agreement do not provide a criteria to determine the nature of the mark's fame. See
   Hossam Al-Deen Al-Zagher, (2005), The Protection of Well-Known Trademarks, paper presented at WIPO National
   Training Workshop on Intellectual Property for Diplomats organized by The World Intellectual Property Organization
   (WIPO) in collaboration with Ministry of Foreign Affairs Muscat, from 5 to 7 September 2005. p. 3
30
   See. Salah Zeen Al-Deen, (2006 Second issue, 1st edition) Industrial and Commercial Property Acts, (Dar Althagafa,
   Amman) p.134
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European Journal of Social Sciences – Volume 19, Number 2 (2011)

       "The following may not be registered as trademarks: the trademark which is identical or
       similar to, or constitutes a translation of, a well-known trademark for use on similar or
       identical goods to those for which that one is well-known for and whose use would
       cause confusion with the well-known mark, or for use of different goods in such a way
       as to prejudice the interests of the owner of the well-known mark and leads to believing
       that there is a connection between its owner and those goods ….".
       It is to be noted that Article 8 (12) prohibits the registration of a trademark if it falls within the
following circumstances:
           1. where a trademark in respect of which the application for registration is filed for use for
                identical goods which constitutes a reproduction of the well-known mark of another
                person. "Identical trademarks refer to two trademarks which are visually the same or
                basically have no visual difference"31.
           2. where a trademark in respect of which the application for registration is filed for use for
                similar goods which constitutes an imitation of the well-known mark of another person
                ."Similar trademarks refer to two trademarks which have similar appearance,
                pronunciation or meaning in their wordings, or similar configuration, colouring and
                appearance in their devices, or similar overall combination of wordings and devices in
                terms of arrangement and appearance."32
           3. where a trademark in respect of which the application for registration is filed for use for
                non-identical or dissimilar goods which constitute a reproduction or an imitation of the
                well-known mark of another person.
           4. where a trademark in respect of which the application for registration is filed for use for
                identical or similar goods which constitutes a translation of the well-known mark of
                another person.
       It is clear that the registration prohibition of a trademark above is subject to two conditions:
           1. the use of the trademark for identical or similar goods would cause confusion between
               the well-known mark and the one intended for registration.
           2. the use of the trademark for non-identical or dissimilar good would affect the interests of
               the owner of the well-known mark and leads to believing that there is a connection
               between its owner and those goods.

2.3. The Protection of Translation of Well-Known Marks under Jordanian Law
Article 8 (12) of Jordanian Trademarks Law provides for the protection of well-known trademarks and
their translation in compliance with the Paris Convention and TRIPs Agreement. Therefore, the
translation of a trademark is protected under the scope of protection of well-known mark by virtue of
law whether it is registered or not in Jordan. In other words, the protection of the translated mark is
restricted only to the translation of the well-known mark. In addition, the Jordanian Law does not
require the registration of well-known trademark in order to protect its translation. Moreover, the
Jordanian Law does not require the use of the well-known trademark in Jordan in order to provide its
protection because of the mere fact of its popularity.
        To properly examine the issue of the protection of translated trademarks , it is necessary to first
define what is meant by translation.
        Translation’ –literal or conceptual translation, meaning to transform the mark into another
script or language with a meaning that represents that of the original. While transliteration or phonetic




31
   http://www.hktdc.com/info/mi/a/brpcn/en/1X067X27/1/Brandname-Registration-And-Protection/2-5-What-Are-
   Identical-Or-Similar-Trademarks.htm. visit on August, 08,2010.
32
   Ibid.
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transliteration, meaning to transform the trademark into another set of characters with a pronunciation
that represents the sound of the original, or its Latinized version.33
        It should be noted that Article 8 (12) provides for the term "translation", but it does not provide
for the term of "transliteration".34 However, Article 8 (12) meant by the term "Translation" is the
translation into the Arabic language. For instance, considering the word "Star" as a well-known mark,
the translation and transliteration of the word "Star" from English language into the Arabic language
shall be as follows:

                   English                           Arabic
                   Star                              ‫(نجمة‬Nijma)

                   English                           Transliteration
                   Star                              ‫ستار‬

        It is clear that the translation of the word "Star" into another foreign language other than
Arabic language such as French shall not be protected under Article 8 (12) because of such translation
will not lead to the confusion of the public in Jordan. For instance:

                   English                           French
                   Star                              étoiles

       In view of Article 8 (12) of the Jordanian Trademarks Law as far as the translation of a well-
known mark is concerned, the provided protection is subject to certain conditions:
      1. if the translation is used for similar or identical goods or services, then it is considered as an
           infringement in case it causes confusion to the public.
      2. if the translation is used for different goods or services, the use of it should prejudice the
           interests of the owner of the well-known mark and lead to believing that there is connection
           between its owner and those goods.
       It is clear that if any dispute arises in relation to translation of a well-know trademark, it would
be examined by the Jordanian Competent Authorities on a case by case basis depending on the above
two conditions.


3. Case of Contradiction in the Jordanian and Arab Judiciary
There have been very few decided cases related to the protection of translation of well-known marks
by Jordanian and Arab competent authorities . It is important to note that the resolved cases in Jordan
relating to translation of well-known marks are divided into two phases in terms of time which reflects
the contradiction between Jordanian and Arab Judiciary in relation to the provided statutory protection
to well-known marks and their translation.

3.1. First Phase: Pre-Amendment Provisions of Trademarks Law of 1999
One of the most important shortcomings of this phase is that the statutory provisions of the Trademarks
Law do not recognize the concept of well-known marks.35 In addition, they do not provide explicit
provisions prohibiting the registration of any trademark that is identical or, similar to, or constitutes a


33
   WIPO Briefing Paper (Internationalized Domain Names –Intellectual Property Considerat.ion Prepared by the Secretariat
   of the World Intellectual property Organization (WIPO). Geneva — December 6 and 7, 2001
34
   The term "Transliteration" is provided under Article 4 (b) of the WIPO Joint Recommendations. See page (6) above.
35
   Abdulla Nawafleh, "Development of Intellectual Property Law and Foreign Direct Investment in Jordan". Journal of
   International Commercial Law and Technology. Vol.5 Issue 3 (2010), p. 152
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European Journal of Social Sciences – Volume 19, Number 2 (2011)

translation form of a well-known mark. The only provision which might have provided protection for
the well-known mark implicitly in this phase is the existing article 8 (10):
        "A mark identical with one belonging to a different proprietor which is already entered in the
register in respect of the same goods or class of goods for which the mark is intended to be registered,
or so closely resembling such trademark to the extent that it may lead to deceiving third parties".
        It is clear that the prohibition is only confined to a mark identical to one already registered, and
the protection is provided only for the same goods or class of goods and subject to that the mark which
is intended to be registered causes likelihood of confusion to the public of Jordan. Thus, there is no
prohibition for registration of any mark whose use for non-identical or dissimilar goods constitutes a
reproduction or an imitation to, or constitutes a translation of a mark of another person registered in
Jordan.
        Therefore, the Jordanian High Court of Justice decided in a case related to the translation of the
well-known mark "BATMAN" into the Arabic language that the registered trademark "‫"الرجل الوطواط‬
"AL-Rajul al-Watwat" is not an infringement of the well-known trademark "BATMAN" though the
former is a translation of "BATAMAN" where such translation does not lead to the confusion of the
public of Jordan.
        There is a similar case related to a translation of a well-known mark, but the use of the mark
was used for a different class of goods; in 1997 a Jordanian company, Jordanian Trico & Yarn Factory
Co., filed a trademark application for the “AL TIMSAH” mark (which means “crocodile” in Arabic) in
class 32 similar to the application filed by La Chemise Lacoste, a French company. The Registrar of
trademarks rejected Lacoste’s opposition to the registration of the “AL TIMSAH” mark on the basis
that the two marks, AL TIMSAH and LACOSTE, were in different classes.36 Thus, there is no
likelihood of confusion.
        The French Company La Chemise Lacoste, appealed to the Jordanian High Court of Justice
held that:
        "the protection which is provided under sub-section (10) of article 8 is confined only to
        a mark already registered for the same class of goods. Therefore, the trademark
        Crocodile (LA CHEMISE LACOSTE) owned by the French company registered in
        most parts of the world on several classes of goods, including clothing and sport tools.
        The mark "LA CHEMISE LACOSTE", which a registered trademark in Jordan woven
        with a Crocodile in many classes of goods, does not resemble the mark required to be
        registered (AL-TEMSAH), not in sound or writing, or use, considering that there are
        differences in the varieties of produced goods, because the classes of goods are different
        in the two marks, then the use of the mark intended to be registered with these
        distinguishing features would not lead to deceiving the public. Therefore, The Registrar
        of Trademarks' rejection of the French Company's opposition is in accordance with the
        provisions of the Trademarks Law".

3.2. Second Phase: Post- Amendment Provisions of Trademarks Law of 1999
The Amending Trademarks Law of 1999 sets out explicit provisions to protect well-known marks in
compliance with the requirements of the International Conventions. The Amending Law defines a
well-known mark and provides special and extra protection for well-known marks and their translation
even though the trademark is neither registered nor used in Jordan.
        The core question herein is whether the High Court of Justice would have ruled differently or
not in the above two decided cases in the light of the amended provisions protecting well-known marks
and their translation? In other words, would have the High Court of Justice ruled against the Registrar's
rejection of the applicants’ oppositions to the registration of the two infringing trademarks above?

36
     See Bashar H. Malkawi " Jordan’s Accession to the WTO: Retrospective and Prospective" Estey Center Journal Of
     International Law and Trade Policy, vol. 11 no. 1 p. 31.
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        The Jordanian High Court of Justice has had the chance to apply the Amending Law's
provisions which provide for the protection of well-known marks and their translation. In 2003, in
Iraqi Chocolate Production Company, Ltd37 (appellant) v. The Registrar of trademarks & Mars
Incorporated (Apellee), the High Court of Justice held that the trademark of the (appellant) (Merrikh)
constitutes a translation into Arabic of the (Mars) trademark owned by the (second Apellee).
Therefore, the Court ruled that the decision of the Registrar is in compliance with the provisions of
Article 8 (12) of Trademark Law. Consequently, the High Court dismissed the Appeal.

3.2.1. The Facts and Proceedings in Mars v. Merrikh Case in Jordan
The defendant Iraqi Chocolate Production Company's trademark "Merrikh” was filed on March 14,
2004 and registered for class 30 under the registration No. (71603).
        The plaintiff Mars Incorporated is the proprietor of the Trademark 'MARS'. The said trademark
is registered in Jordan on August, 22,2002 for class 30, and in as many as 150 countries.38 The
defendant's trademark (Merrikh) means “Mars” in English and the later means (Merrikh) in Arabic. It
should be noted that Merrikh in Arabic is the fourth planet from the Sun in the Solar System.
        On November, 17,2004 the plaintiff Mars Incorporated, submitted an application -includes a
statement of the grounds for opposition- for a cancellation of registration of the defendant's trademark
"Merrikh" at the Jordanian Registrar of Trademarks Office, claiming that his trademark "Mars" is
registered in a number of countries and also in Jordan prior to the registration of the defendant's
trademark "Merrikh". The plaintiff proceeded that his trademark is a well known trademark in the
sense of article 6bis of Paris Convention and sections (2) & 8 (12) of the Jordanian Trademarks Law
and that the defendant’s “Merrikh” trademark constitutes a translation in Arabic of his well- known
trademark where it causes confusion to the public and indicates a connection in the course of trade
between Mars Incorporated and Iraqi Company.
        The Jordanian Trademark Law provides that the Registrar should send a copy of the notice of
opposition to the defendant who shall, within the prescribed time after the receipt of such notice, send
to the Registrar a counter-statement.
        The defendant in his counter statement objected the plaintiff's opposition by asserting that the
Trademark "Merrikh" doesn't constitute a translation of the trademark "Mars" on the ground that the
trademark "Mars" is the name of the family company's founder, Mr. Frank C Mars while the trademark
"Merrikh" is a distinctive name created by the defendant which is in Arabic the name of the fourth
planet from the Sun in the Solar System on one hand. On the other hand, "Mars" is a name of a human
being who is the Founder of Mars Incorporated then the plaintiff has no right to manipulate such a
name to the effect of preventing others from using such a name if it means something else in other
languages. Another objection on the plaintiff's opposition is that the trademark "Merrikh" is a
distinctive mark in a way it does not resemble the trademark "Mars". The defendant argued that both
trademarks "Merrikh" and "Mars" are different in writing and in pronunciation and each has different
colors and graphics. Therefore there is no likelihood of confusion.
        On August, 31, 2008, the Registrar considered the views of both parties, and decided in favor of
the plaintiff. The ground for this decision was Article 7 (1) (2) and Article 8 (6) (12) of the Jordanian
Trademark Law.39 The Registrar pointed out that his decision based on the ground of lack of

37
   This company is the subsidiary of the Parent Company Nahla Corporation LtD.
38
   Both trademarks (Mars) & Merrikh are used in respect of chocolates and confectionery.
39
   Article 7 provides:
1.A trademark shall be registered if it is distinctive, as to words, letters, numbers, figures, colors, or other signs or any
combination thereof and visually perceptible .
2. For the purposes of this Article, "distinctive" shall mean applied in a manner which secures distinguishing the goods of
the proprietor of the trademark from those of other persons.
A.rticle 8 provides:
6. Marks which are contrary to the public order or morality or which lead to deceiving the public, or marks which
encourage unfair trading competition or contain false indications as to their real origin.
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distinctiveness and on descriptiveness of the trademark "Merrikh" on one hand, on the other hand, the
mark 'Merrikh' constitutes a translation of the well-known trademark "Mars" and it may encourage
unfair trading competition or contain false indications as to their real origin. However, the Registrar
decided to cancel and remove the trademark "Merrikh' registered in the class (30) from the register.
         Upset with the decision, the defendant filed an appeal to the High Court of Justice. The ground
for this appeal was the same as the ground of the counter statement mentioned above.
         On September,14, 2008, the High Court of Justice held in brief that the trademark "Mars” is a
well-known trademark pursuant to Article 2 of the Trademark Law and Article 16 (2) and (3) of TRIPS
Agreement. The High Court added that the defendant’s trademark "Merrikh" constitutes a translation in
Arabic of the well-known trademark "Mars" and the latter is protected pursuant to Article 8 (12) of the
Trademark Law and Article 16 (2) of the TRIPS Agreement. Therefore, the Registrar's appealed
decision is according to the statutory provisions of the Trademarks Law and the Appeal must be
dismissed.40

3.2.2. Comments
In fact, the High Court of Justice was before an issue of using a trademark that constitutes a translation
of a well-known mark of another person. It is obvious that the Court in question focused only on
determining whether the Appellee's mark "Mars" is a well-known mark or not. It is clear from the brief
report of the Court in question that the Court only examined the duration and geographical areas of the
Apellee's mark registrations and the sales value of the mark without demonstrating the ultimate factor
of likelihood of confusion and other relevant factors. Consequently, the Court ruled that:
         "the Apellee's mark 'Mars" has fulfilled the conditions of being a well-known trademark
         in the line with definition provided under Article 2 of the Jordanian Trademarks Law
         and the provisions of Paris and TRIPs Agreement. Therefore, the appeal should be
         dismissed".
         Accordingly, the High Court of Justice erred to the extent that it focused only on one factor that
whether the Apellee's trademark is a well-known or not in the meaning provided under section (2) of
the Jordanian Trademarks Law. The Court must have focused on the question of confusion or the
likelihood of confusion arising from the translation of the subject marks.
         In the author's view, the High Court of Justice should have demonstrated the following issues
which may affect its ruling:
         1. The presence of the practical fact that the translation of a trademark does not constitute a
             reproduction or a substantial similarity between the marks "Mars" and "Merrikh" despite the
             appellant's allegation that his mark "Merrikh" is a distinctive mark which is in Arabic the
             name of the fourth planet from the Sun in the Solar System, whereas it does not constitute a
             translation of the appelee's mark. Thus, There are no resemblances between the two marks
             in sound, writing and appearance.
         2. As mentioned earlier, the provided protection related to the translation of a well-known
             mark by the Jordanian Trademarks Law and the International Conventions is not an
             absolute one since there are certain statutory conditions that have to be met which are:41
                • the use of the trademark for identical or similar good would cause confusion between
                    the well-known mark and the one intended for registration.
                • the use of the trademark for non-identical or dissimilar goods would affect the
                    interests of the owner of the well-known mark and lead to believing that there is a
                    connection between its owner and those goods.
         3. Based on the above conditions and applying them to the present case, it appears that the
             High Court of Justice did not apply the test for assessing the likelihood of confusion in
             relation to the translation of the mark "Mars''. It is obvious that the court simply endorsed
40
     Case No. 230/2008, decision No. 28 issued by The High Court of Justice at September, 14, 2008.
41
     Section 8 (12) of the Jordanian Trademarks Law.
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            the findings related to the likelihood of confusion prepared by the appellee's lawyer. Despite
            the fact that the High Court of Justice in case No. 174/96, examined the criterion of
            similarity between two marks that leads to confusion of the relevant sector of Jordanian
            public, the Court ruled that:
        "The criterion in determining the existence of a similarity between the two marks that
        would lead to confusion and deceiving the public lies in the availability of multiple
        factors, and these factors must be taken into account which are: the appearance, the
        sound and the writing. If there is no link between the two marks as a result of
        differences in writing, sound, and appearance to the extent that none of these differences
        causes confusion or misleading, and although the goods that symbolize both marks are
        similar, the registration of the mark in this case is consistent with the law".42
        Having the High Court ruled that the likelihood of confusion lies in the availability of the
factors of appearance, sound and writing, the Court should have taken into consideration these factors
in Iraqi Chocolate Production Company, Ltd v. The Registrar of trademarks & Mars Incorporated,
where the defendant's mark "Merrikh" and Plaintiff's mark "Mars" do not resemble each other in
sound, appearance and meaning that they are likely to cause confusion, mistake or deception of
purchasers of two goods.
        Consequently, the High Court of Justice's decision represents a radical departure from this
Court's unwavering adherence to the criterion of determining the likelihood of confusion set forth in
the above case, the case related to the translation of the well-known mark "BATMAN" into the Arabic
language "AL-RAJUL AL-WATWAT and the case related to the translation of the well-known mark
"LA CHEMISE LACOSTE" into Arabic AL-TIMSAH.
        In reviewing Mars incorporated v. Iraqi Chocolate Production Company case and being the
first one to reach the High Court of Justice to consider the protection against the translation of a well-
known trademark offered by the statutory provisions of the Amending Trademark Law 1999, this case
should have provided guidance as to the scope and limitation to such protection in the light of the
conditions provided under Section 8 (12) of the Jordanian Trademarks Law. Furthermore, the Court in
question has had the opportunity under the new existing statutory provisions to set forth a genuine test
that determines the existence of likelihood of confusion resulted from a translation of a well-known
mark into the Arabic language.

3.3. Arab Judiciary : Concurrent Actions, Same Litigants, Same Cause of Action and Similar
Findings
The competent authorities of many Arab States (Egypt, Syria, Saudi Arabia, , Morocco, Palestine
Lebanon, Sudan, Kuwait, and Yemen)43 dealt with concurrent actions, same litigants and same cause of
action of Mars incorporated v. Iraqi Chocolate Production Company in Jordan. The plaintiff Mars
incorporated brought several actions against the Iraqi company claiming that the latter has committed
infringements by translating its well-known marks (Mars, Galaxy, Milky way and Jewels) into the
Arabic language (Merrikh, Majarrah, Darb labena, Jawahir) respectively. Thus, such translation would
constitute confusion to the relevant sector.
        The defendant Iraqi Company rejected Mars Incorporated's allegation claiming that it is the first
who created the idea of using the Arabic names of the planets, universes and zodiacal signs known
since thousands of years by two of the greatest civilizations Ancient Egypt and Mesopotamia (Ancient


42
     High Court of Justice. Decision No. 174/96. Unpublished, issued on 26/22/1996.
43
     These Arab Sates are members of the WTO Egypt 30 June 1995, Jordan 11 April 2000, Morocco 1 January 1995,
     Oman, Sultanate of 10 October 2000, Qatar 13 January 1996, United Arab Emirates 10 April 1996, Bahrain,
     Kingdom of 1 January 1995, Kuwait 1 January 1995, except Saudi Arabia and Sudan, Algeria, Lebanon, Iraq and
     Yemen.
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Iraq). Thus, its marks do not constitute translations of Mars Incorporated's marks in the sense that the
two marks are different in sound, writing and appearance.

3.3.1. Saudi Arabia: Mars incorporated v. Nahla Corporation Limited
July, 02,2007 Mars Incorporated filed an appeal against the Ministry of Trade and Industry's decision
and Nahla Corporation Limited44 to Diwan al Mazalem (The Administrative Court which hears cases
that involve the government).45 Mars incorporated established its appeal on the ground that the
Ministry of Trade and Industry's decision on April, 10, 2007 accepting the appellee's (Nahla
Corporation Limited)46 the registration of the word "Merrikh" as a trademark written in Arabic and
Latin letters under class 30. The appellant asserted that the appellee is infringing its registered
trademarks in violation of Section6 (2) of the Paris Convention to which Saudi Arabia is a party, and
that the said infringement through translating the appellant's trademark "Mars" into Arabic is likely to
cause confusion, or to cause mistake, or to deceive the relevant sector of the public.
        It should be noted that Mars Incorporated in opposing the Ministry's decision relied on the
protection of well-known trademarks provided under Article 6 (2) of the Paris Convention to which
Saudi Arabia is a party rather than the protection provided under the Regulation of Trademarks of
Saudi Arabia. However, there is nothing in the Regulation in question that provides for a protection
against the translation of well-known trademarks. In addition, Saudi Arabia is still in the process of
accession to the World Trade Organization. Thus, The Kingdom of Saudi Arabia shall undertake the
amendment of the statutory provisions of the Regulation of Trademarks to comply with the WTO
Agreements such as Trips Agreement.
        In reply, The Appellee Nahla Corporation Limited contended that the registration of the
trademark "Merrikh" in Arabic and Latin letters does not resemble the Appellant's registered
trademarks "Mars", and there are no statutory provisions under the Regulation of the Trademarks
which provide protection against the translation of well-known trademarks. But section 2 of the
Regulation prohibits the registration of any trademark identical or similar to another trademark which
may cause confusion to the relevant sector in the Kingdom of Saudi Arabia, and Article 6 (2) of the
Paris Convention provides the protection for the well-known trademarks if the subject marks cause
confusion and lead to deception only. Consequently, the Appellee petitioned the Court (Diwan Al-
Mazalem) to dismiss the appeal.
        In dismissing the appeal, the Court (Diwan Al-Mazalem) addressed and analyzed the arguments
of both the appellant and Appellee and concluded that:
        Having examined the trademark that intended to be registered and the appellant's
        trademark, it is clear that there is no matching or similarity in the appearance and sound
        between the two marks, though the similarity called for is the similarity that can lead to
        confusion and deception among the public and this has not happened in this case. In
        terms of translation, the Regulation of the Trademarks does not embrace statutory
        provisions that prevent the registration of translation of well-known trademarks.
        Regarding the protection provided under section 6 (2) of the Paris Convention to which
        the appellant relied on in its finding, it should be noted that such protection is subject to
        the condition that the translation shall not cause confusion or lead to deception among
        the public which is not the case in translating the trademark "Mars" into Arabic
        "Merrikh". Consequently, the Court shall dismiss the appeal".



44
   Mars Incorporated v. The Ministry of Trade and Industry's decision and Nahleh Corporation Limited, Case No.
   3517/1/2007.
45
   Saudi Arabia has a dual judicial system comprised of the Shari'ah Courts System (al-Mahakim al-Shariy'ah) and an
   independent administrative judiciary known as the Board of Grievances (Diwan al-Mazalem)". Dr. Abdullah Ansary "A
   Brief Overview of the Saudi Arabian Legal System"
46
   This company is the Parent of The Iraqi Company in Jordan and other Arab countries.
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        It is obvious that the Court (Diwan Al-Mazalem) emphasized on the existence of the ultimate
factor of the likelihood of confusion to protect the trademark "Mars". The Court in question considered
the protection under Article 6 (2) of the Paris Convention is not an absolute protection but subject to
the statutory condition where the translation causes confusion.

3.3.2. Republic of Yemen: Iraqi Chocolate Production Company/Yemen v. Ministry of Industry and
Trade & Mars Incorporated47
April, 23, 2005, the Appellant Iraqi Chocolate Production Company/Yemen48 filed an application to
the Commercial Court in its appellate jurisdiction in Yemen opposing the Register decision No. (20)
dated March, 05,2005, on the ground that the Registrar issued his decision rejecting the registration of
its trademark without specifying the grounds for rejecting the appellant's application where the
Registrar only stated the facts and the history of the subject marks.
        The Appellee Mars Incorporated and the appellant Iraqi Chocolate Production
Company/Yemen submitted the same argument before the Commercial Court in Yemen that was
submitted before the competent Authorities in Jordan and Saudi Arabia. Thus, avoiding repetition, a
summary for the Court’s findings and final decision shall be presented.
        The Commercial Court in its appellate jurisdiction held that the Registrar should have
determined the grounds for his rejection of the application, and he should have specified in the written
document what the grounds were and the legal basis for rejecting the appellant's application not only
stating the facts of each mark in question.
        In consideration of the appellee's findings, the commercial Court held that the statutory
provisions of the Paris Convention related to the protection of well-known trademarks are incorporated
in the national law under Article 89 ( C ) of the Yemeni Intellectual Property Law No. (19) 1999. Thus,
the specified protection of the well-known trademarks and their translation into other language is
subject to the condition that the translation of the trademark shall cause confusion to the relevant
sector.
        The Commercial Court examined both trademarks "Merrikh" and "Mars" focusing on the
sound, written letters and appearance applying a close scrutiny to determine whether there is a
resemblance between the two trademarks or not, the Court concluded that there is a difference between
both marks in sound, writing and appearance which shall not lead to confusion or deception among
ordinary consumers. Consequently, the Commercial Court held the following:
       1. Cancellation of the administrative decision No. (2) issued by the first Appellee the Registrar
           on March, 05, 2005.
       2. The second Appellee shall pay two hundred thousand Riyals as trial's expenses and lawyers'
           fees.49

3.3.3. Lebanon: Mars Incorporated v. Iraqi Chocolate Production Company
Currently, Lebanon adopts the post-opposition system where after the examination of an application by
the Intellectual Property Department, the trademark registration can directly be effected, published in
the official gazette and notified to the applicant. The Lebanese Law offers third parties after the
trademark has been registered, the opportunity to object to a trademark registration before the
competent court. 50 It is worth mentioning that there is a draft of new legislation for the protection of
trademarks. The current Law has undergone major overhaul, especially the opposition procedures
where the legislator is intending to make a shift from the pre-registration opposition to post-registration
47
   Case No. 220/2005.
48
   Iraqi Chocolate Production Company in Yemen is one of the companies owned by Nahla Corporation. Limited.
49
   Two hundred thousands Yemeni Riyals are equivalent to 1000 us$.
50
    See Bsheer Haza'a, Director of Industrial and Commercial Property Office, "Trademarks Law between the Law and
   Practice in the Syrian Arab Republic" Paper presented at WIPO National Workshop on Trademarks organized by The
   World Intellectual Property Organization (WIPO) in collaboration with Ministry of Industry o f Syrian Arab Republic
   and Ministry of Trade of Lebanese Republic Dimscuss, December. 22 &23, 2003 p. 7.
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opposition system. Consequently, the plaintiff Mars Incorporated had to bring an action before the
Lebanese First Instance Court in its commercial jurisdiction against Iraqi Chocolate Production
Company.
        The plaintiff brought two actions against Iraqi Chocolate Production Company before the First
Instance Court of Beirut, but different chambers in different dates as follows:
          • The First, Case No. 60/2004 dated on January 2004 related to the translation of the
              plaintiff's two trademarks "Mars" and "Jewels" into Arabic "Merrikh" and "Jawahir"
              respectively. This case was heard before the First Instance Court of Beirut, The Tenth
              Chamber.
          • The second, Case No. 184/2004 dated on June, 25, 2004 related to the translation of the
              plaintiff's two trademarks "Milky Way" and "Galaxy" into Arabic "Drb Labena" and
              "Majarra" respectively. This case was heard before the First Instance Court of Beirut, The
              Third Chamber
        In October, 09,2004, the Plaintiff presented a motion for joinder and consolidated of the two
actions in pursuant to section 501 of the Lebanese Civil Procedure Law. However, the Court of the
First Instance of Beirut (The Tenth Chamber) denied the plaintiff's motion for joinder.
        The plaintiff and defendant, both submitted the same arguments in the above two cases before
the two Chambers of the First Instance Court of Beirut. Considering these arguments having common
grounds, and refer to the same cause of action at issue, to avoid repetition, these two cases' arguments
will be jointly discussed in the context of one.
        The plaintiff submitted that the defendant deliberately imitated its trademarks "Milky Way",
"Galaxy" "Mars" and "Jewels" and used them in a way as to mislead the public. The plaintiff also
argued that the defendant registered its trademarks as distinctive trademarks which constitute
translations of the plaintiff's trademarks into Arabic "Darb Labena", "Majarrah" "Merrikh" and
"Jawahir" respectively. The plaintiff maintained that its marks are well-known trademarks and
registered since 1964 in Lebanon.
        The Plaintiff concluded that the defendant infringements on plaintiff's trademarks amounted to
the following:
        1. Fraudulent imitation and counterfeit of the plaintiff's trademarks pursuant to section 105 of
            the Trademarks and Unfair Competition Law;51
        2. translation of the plaintiff's well-known trademarks into Arabic which is protected against
            pursuant to Article 6(2) of the Paris Convention which was signed by the Lebanese
            Government;
        3. an act of unfair competition to use the translation of the plaintiff's well-known trademarks
            pursuant to section 97 (2) of the Trademarks Law and Unfair Competition Law.52
        Furthermore, the plaintiff contended that the defendant's history is rife with actions of using its
trademarks through translating them into Arabic and using them on the defendant's goods in the Arab
States. Consequently, the plaintiff pleaded for invalidating and canceling the registration of defendant's
trademarks and preventing the defendant to import any goods that indicate to these marks into
Lebanon..
        In replying, the defendant submitted that due to the Iraqi Company's geographical location
where the company was established in Mesopotamia (Ancient Iraq) and because of the knowledge of
the Arabs of the Astronomy, the company chose the names of the planets to their products (such as
Merrikh, "Darb Labena, "Majarra, Merrikh, Jawahir, etc….). The defendant proceeded that the Iraqi

51
    Section (105) provides that: "……; Any person who deliberately imitates or uses a registered mark without the
   authorization of the owner of the mark even if the mark is accompanied by expression such as kind, type, style, imitation
   or the like in a way as to mislead the public,..")
52
    Section 97 (2) provides that: "Any act subject to the free jurisdiction of courts and determined to be unfair competition".
   See Jozzeaf Nakhlah Samaha " Al-Muzahmah ghir Al-Mashrouah, Comparative Study" (1991, 1st Edittion). Ezdeen for
   Publishing and Distribution. Lebanon. P. 44.
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Company registered its two trademarks " Merrikh", "Darb Lebana", "Majarra" and "Jawahir" on
October, 14, 2002 under the classes 29, 30 and 32 at the Department of Intellectual Property Protection
in Lebanon. The defendant argued that there is no fraudulent imitation and counterfeit between its
trademarks and the plaintiff's trademarks mentioned above. The next argument was that the plaintiff
never intended to use names after the names of planets, universes and zodiacal signs. The defendant
further argued that its trademarks do not resemble the plaintiff's trademarks in sound, writing, and
appearance.53
        The defendant's next argument was that the Plaintiff failed to present any evidence of the
defendant's bad faith in creating confusion among consumers pursuant to section 106 of the
Trademarks and Unfair Competition Law. Furthermore, the defendant argued that the substantive
elements of the unfair competition allegation pursuant to section 98 of the Law in question do not exist
where the defendant only registered its trademarks in the Register and the goods are still not available
for the consumers in the Lebanese market. Consequently, the defendant petitioned the Courts of First
Instance of Beirut (Tenth and Third Chambers) to dismiss the case.
        Accordingly, the Courts (Tenth and Third Chambers) addressed and analyzed the arguments of
both the plaintiff and defendant focusing on the three particular issues raised by the plaintiff before
each Chamber. Thus, the courts found the following flaws in the appellant’s allegations:

1. Fraudulent Imitation and Counterfeit of the Plaintiff's Trademarks by the Defendant Through
the Alleged Translation of Plaintiff's Trademarks
Based on the above alleged infringement, both courts, after reviewing the Trademarks and Unfair
Competition law in fraudulent imitation, stated that section 106 of the Law in question provides that
the offense of fraudulent imitation of a mark is committed with intention to deceive the public. The
Court pointed out that the plaintiff's allegation regarding the fraudulent imitation committed by the
defendant with the intention to deceive people is subject to the court's discretion. The Courts shall
evaluate the defendant's fraudulent imitation from the point of view of the ordinary consumers taking
into account the overall similarity regardless of the minor differences between the plaintiff's trademark
and the defendant's trademark.54 Therefore, the Courts commented that the plaintiff failed to present
any evidence showing the defendant's intention to deceive consumers in relation to its trademarks,
though for it is easy for the consumer to distinguish between the trademarks in question, and the issue
requires a consumer to be well versed in astronomical terms and names of planets, so they can be
compared in the translation. Consequently, based upon its findings set forth above, the Court (Third
Chamber) held that the statutory requirements for the fraudulent imitation have not been fulfilled in
relation to the mark "Milky Way" and "Darb Lebana. The Court (Tenth Chamber) held the same as the
(Third Chamber) in relation to the plaintiff's trademark "Mars". But, in relation to the plaintiff's
trademark "Jeweles", the Court (Tenth Chamber held that the defendant is in violation of section 106 of
the Trademarks and Unfair Competition Law.

2. Translation of the Plaintiff's Well-Known Trademarks into Arabic which is Protected
Pursuant to Article 6(2) of the Paris Convention which was Signed by the Lebanese Government
Both Courts had the same view in relation to the alleged translation of the plaintiff's trademarks except
the trademark "Jewels". The Courts favored defendant's argument that comparing the Plaintiff's
trademarks "Milky Way"," Galaxy" and "Mars" with defendant's trademarks Darb Lebena" "Majarra"
and "Merrikh" respectively; it is clear that there is no resemblances between the trademarks which is in
contrast with the plaintiff's allegation. The Courts went on stating that the defendant's trademarks are
the names of the planets in our universe and it is not correct to consider the defendant's trademarks as
translations of the plaintiff's trademarks. Regarding the defendant's trademark "Jawahir" the court held

53
   See Naeem Mgbgb " The Trademark" Comparative Study" ( 2010, 1st Edition) (Al-Halabi Legal Publication, Lebanon).
   pp. 72-73.
54
   Section 107 of the Lebanese Trademarks and Unfair competition Law.
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that the translation of "Jewels" into "Arabic" Jawahir leads to confusion among consumers and the two
trademarks resemble each other in sound, writing and meaning.
        The Third Chamber of the First Instance Court ruled in favor of the defendant dismissing the
case and ordered that plaintiff to bear the costs of this proceeding as well as the attorney's fees of the
defendant's counsel. As a result, the Plaintiff Mars Incorporated filed an appeal to the Court of appeal
(Ninth Chamber) in Lebanon. The Court of Appeal completely re-examined the case, both as to the
facts, which are the cause of the litigation, and as to the rules of law applied to those facts. On October,
31, 2006 the Court of Appeal upheld the appalled decision and dismissed the appeal.
        Upsetting with the Appeal Court's decision, the plaintiff contested the decision and appealed in
Cassation Court for a review of the Court of Appeal's decision, as with other courts of cassation. The
Lebanese Cassation Court, in its capacity as the highest court in Lebanon, examined the contested
decisions from the point of view of the proper application of the law by the Appeal Court. The
Cassation Court dismissed the Mars Incorporated's appeal by judging that the Appeal Court had
correctly applied the law.
        Regarding Case No. 60/2004 dated on January 2004 related to the translation of the plaintiff's
two trademarks "Mars" and "Jewels" into Arabic "Merrikh" and "Jawahir" respectively. On July,
07/2007, the First Instance Court of Beirut (Tenth Chamber) ruled in favour of the defendant
dismissing the plaintiff's case in relation to the translation of its trademark "Mars . But ruled in favour
of the Plaintiff by ordering the Department of Intellectual Property Protection to cancel the registration
of defendant's trademark "Jawahir" from the Register.
        The plaintiff and defendant filed cross appeals to the Court of Appeal (Ninth Chamber). The
Court of Appeal dismissed the cross appeal. As a result, the plaintiff contested the decision in
Cassation Court and then The Cassation Court in Lebanon dismissed the appeal. It should be noted that
same Judges ruled in both cases at the two stages of Appeal and Cassation.
        As far as the author is aware, the trial proceedings of courts in Egypt, Syria, Kuwait, Palestine,
Sudan and Morocco are still going on between same litigants, same cause of action: Mars Incorporated
v. Iraqi Company


Conclusion
The foregoing analysis has shown that Mars Incorporated v. Iraqi Company Case indicates that the
outcome of litigation in Arab Countries is significantly unpredictable, in spite of the fact that the Arab
Countries' trademark laws have been duly amended in accordance with the Paris Convention and most
of them with TRIPS Agreement in relation to protection of well-known marks and their translations.
This is due to the absence of substantive harmonization to an appropriate interpretation and application
of the trademark provisions of Paris Convention and TRIPS Agreement by the competent authorities in
these Arab Countries.55
        It might be helpful to develop case law criteria in a way that bears structural harmonization for
appropriate interpretation and application of the trademark provisions by competent authorities in the
Arab Countries according to relevant circumstances and guidelines of the WIPO Joint
Recommendations.


Acknowledgement
The Author would like to thank Marah Al-Abweh & Zeen Razeem for their valuable comments on this
Article and The Counsel Mr. Abed Alrhman khraisat for providing me with the case reports from
different Arab States.
55
      Professor Gail. E. Evans, Substantive Trade Mark Law Harmonization by Means of the WTO Appellate Body and the
     European Court of Justice: The Case of Trade Name Protection”, Journal of World Trade Law, Vol. 41, Issue 6, 1127 –
     1162 (2007).
                                                           196
                                 European Journal of Social Sciences – Volume 19, Number 2 (2011)

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