Chelsea Football Club scores in opposition case

An Iranian court has refused to register the trademark FARANEGGIC CFC (and lion design) for services in Classes 35 and 39 of the Nice Classification (March 5 2008).

Sepid Rah Tejarat Co, an Iranian company, filed an application for the registration of the trademark FARANEGGIC CFC. Chelsea Football Club Limited opposed the application within the applicable 30-day period on the grounds that the trademark FARANEGGIC CFC was confusingly similar to its well-known mark CFC (and lion design).

In order to meet legal requirements, Chelsea applied for the registration of its trademark in various classes (including Classes 35 and 39) at the same time as filing the opposition.

Sepid refused to withdraw its application and Chelsea filed suit. Before the court, Chelsea argued that:

• its well-known mark CFC was registered in several member states of the Paris Convention for the Protection of Industrial Property;
  
  
• Sepid's mark was confusingly similar to its CFC mark; and
  
  
• use of the mark FARANEGGIC CFC by Sepid would mislead consumers as to the origin of the goods and constitute unfair competition.

Sepid did not respond to Chelsea's arguments.

Relying on Articles 2 and 6quinquies of the Paris Convention, the court ordered that Sepid's application for the registration of FARANEGGIC CFC be dismissed based on the fact that Chelsea's mark was registered in several members of the Paris Convention. The court further held that under Article 9 of the Iranian Civil Code, the Paris Convention and other treaties to which Iran has acceded are considered to be enforceable in Iran. In addition, the court held that Sepid's mark was confusingly similar to Chelsea's well-known mark and thus infringed Chelsea's rights in the CFC mark.

Sepid did not appeal and the decision is now final.

Mohammad Badamchi, HAMI Legal Services, Tehran