BY Pravin Barthia
intellectual property (IP)
Mauritius: trade marks filed “in defiance of commercial morality”
A recent decision of the Mauritian Industrial Property Tribunal (the “Tribunal”) will provide some comfort to international brand owners. The case involved an application by a foreign company to cancel a trade mark registration obtained by a local party.
The facts in Strategic Foods International Company LLC v Meher Banon Gokhool were all too familiar. A UAE company called Strategic Foods International Company (“SFIC”) has a biscuit brand comprising a label and the words Mini Crème Cookies. For a number of years, SFIC distributed its Mini Crème Cookies product in Mauritius through a Mauritian company called Espace Alimentaire Co. Ltd. At one stage, SFIC applied for the registration of its trade mark in Mauritius but the application was refused, seemingly on grounds of non-distinctiveness. Later, a director of Espace, Meher Banon Gokhool, went on to register, in her own name, a biscuit brand comprising a similar label and the words Mini Crème Cookies. When SFIC found out about this, it sought cancellation of the registration.
In the course of the proceedings, Ms Gokhool made a number of somewhat inconsistent claims. She claimed that she was in fact the owner of the trade mark, having used it in Mauritius since 2006. She claimed that the trade mark had been designed specifically for her (or Espace) on the suggestion of SFIC’s export manager. She suggested that SFICs’ claim for cancellation was simply a case of spite, retaliation for a relationship that had gone sour. But documentation contradicted her claims. There was a letter from Espace addressed to SFIC, confirming that it was the sole importer and marketer in Mauritius of Mini Crème Cookies.
The case for cancellation was based on grounds of deceptiveness, likelihood of confusion and public order and morality. These grounds are set out in section 36(2) of the Mauritian legislation. We’ll first discuss the claims of deceptiveness and confusion, and then move on to public order and morality.
Likelihood of deception and confusion
As you might expect, there isn’t a great deal of trade mark case law in Mauritius. But international brand owners will be pleased to know that the Tribunal referred extensively to UK and EU law. Dealing with the issues of deception and confusion, the Tribunal referred to a number of well-known European decisions.
The Tribunal said that it “found assistance in the CJEU’s pronouncement that the likelihood of confusion includes a likelihood of association in the broad sense, namely that there is a mistaken assumption that there is an organisational or economic link between the undertakings marketing the goods.”
Applying these concepts to the case, the Tribunal held that “there is a visual, aural and conceptual resemblance” between the trade marks, and the Respondent’s trade mark “contains differences so insignificant that they may go unnoticed by the average consumer.” As a result, said the Tribunal, there is a risk that “the public will believe that the goods or services in question come from the same or economically linked undertakings.” It added that the Respondent’s trade mark “could not have been coined.”
The Tribunal went on to say this: “The Tribunal is of the considered view that there is a risk that the average or reasonable consumer comes to the view that the Applicant and the Respondent are affiliated undertakings. As rightly stated by the Applicant this is an undesirable situation.”
Public order or morality
The case based on public order and morality is perhaps more interesting. The Tribunal referred to the UK Registry’s Trade Marks Manual, and said that this talks of trade marks that have a criminal connotation, religious connotation or comprise explicit/taboo signs.
Referring to an old decision, the Tribunal said that morality can extend to the social and financial fields. This thinking, it said, was accepted in a case that also involved an importer adopting the principal’s mark. In that case, the court spoke of the fact that the importer was applying for registration “in defiance of commercial morality.” There was a lack of commercial morality in Ms Gokhool’s decision to seek registration.
The Tribunal concluded that the application for cancellation should be granted. It said that “the evidence submitted for its consideration did not establish on a balance of probabilities that the Respondent ‘coined’ Mini Crème Cookies.” It went on to say that the trade mark under attack was “confusingly similar, in the trademark sense, to the representation of the mark vindicated by the Applicant” and that it was “contrary to public order or morality.”
A judgment that sends out the right message, however, the decision has been appealed.