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intellectual property (IP) | 05 Nov 2019
BY Pravin Barthia
ENSight

intellectual property (IP)


Mauritius: a Shangri-La for international brand owners

Recent Mauritian trade mark judgments bring home just how investor-friendly Mauritius is. They also illustrate how keen the Mauritian trade mark authorities are to follow international precedents, especially UK and EU decisions.

The judgments of the Industrial Property Tribunal in the cases of Shangri-La Tours Ltd v Shangri-La International Hotel Management Limited and the Controller of Industrial Property Office (14 October 2019) dealt with applications by a local company to cancel trade mark registrations in the name of an international group for the marks comprising the word Shangri-La (in one case with the words Le Touessrok & Spa added) in classes 35, 41, 43 and 44.

There were a number of grounds of attack. These can be summarised as follows:

  • failure to qualify as a mark;
  • non-distinctiveness;
  • a contravention of the principle of fair trading and commercial morality.

But first the Tribunal dealt with the issue of onus and timing.

Onus and timing

The Tribunal made the point that the onus is always on the applicant for cancellation. It further said that the position must be assessed at the date of the application for cancellation. In support it cited a famous UK decision, just one of many UK and EU trade mark decisions referred to in the judgment.   

Failure to qualify as a mark

There was clearly no merit in this objection. As the Tribunal said, a mark is no more than a “visible sign” that has the capacity to distinguish the “goods or services of an enterprise from those of other enterprises”.

Interestingly the Tribunal saw fit to mention that the Parliamentary debates around the passing of the IP legislation in Mauritius “show the commitment of the Government to create an investment-friendly environment in the country... whilst at the same time meeting our obligations towards the international community”. As we will see later, this “investment-friendly environment” seems to manifest itself in this judgment.

Lack of distinctiveness, alleged descriptiveness

This was the main basis of the attack. The applicant for cancellation alleged that the word Shangri-La is non-distinctive, because it is both a common word and a “fancy geographical name” that should be available to all. Dealing with this the Tribunal made reference to the “availability rule”. It said this: “The question to be asked is whether other traders would in good faith legitimately want to use the word in the course of business... if the answer is in the affirmative, it follows that the enterprise wishing to register the mark should not be granted a monopoly of the word.”

Shangri-La, said the Tribunal, "relates to a fictional place described in the 1933 novel Lost Horizon by British author James Hilton” and denotes “an earthly paradise, particularly a mythical Himalayan utopia – a permanently happy land, isolated from the world”.

But, the Tribunal went on to say, Shangri-La has a further connotation. It is very relevant that the registrant has used the name Shangri-La for many years and in many countries, and that it has trade mark registrations around the world: “Given the unchallenged worldwide registration of marks (including Mauritius) that are branded with the words Shangri-La... what it evokes in the modern context… [is] an enjoyable, almost idyllic hideaway or place of leisure and relaxation in luxurious settings.”

This, said the Tribunal, made this case very different from the famous Windsurfing decision in Europe, where “the use of Chiemsee for clothing was open to objections because Chiemsee was a large and well-known area in Bavaria”. The marks in this case, said the Tribunal, were distinctive and they were not descriptive.

Fair trading and commercial morality

The applicant for cancellation raised an interesting argument – the registration was contrary to public order and morality because giving exclusivity to the word Shangri-La would allow “wealthy and big businesses to have undue, improper and immoral upper hands on small businesses”.

Quoting from the well-known textbook, Kerly’s Law of Trade Marks or Trade Names, 15th edition, the Tribunal dismissed this argument by pointing out that issues of morality relate to “intrinsic qualities of the mark itself, [they are]... not concerned with circumstances relating to the conduct of the applicant nor apparently to the way in which the applicant uses the mark”.

More good news for trade mark owners

As a final point it is worth noting that the Tribunal made another comment that may be regarded as being trade mark owner-friendly. The Tribunal said that company and trade mark registrations are very different things, and the laws covering these fields are mutually exclusive. It said that “the exclusive right to a corporate name acquired by registration under the Companies Act 2001 does not therefore confer the exclusive right to a company to the use of the corporate name” under the trade mark legislation. This meant that the applicant, a local company called Shangri-La Tours Ltd, acquired no exclusivity to the word Shangri-La in a trade mark sense.

These judgments are comforting to multinational brand owners that the Mauritian authorities will protect their trade marks to the extent that the trade marks are registered and used in the territory.

Pravin Barthia

Senior Associate | IP | Mauritius

pbarthia@ENSafrica.com

+230 5499 0737