Farsi script mark confusingly similar to trademark in Latin script

In PepsiCo Inc v Pardast Paper Products Co (Case 126/15/81), the Iranian Court of Appeal has overturned a decision to allow the registration of CHEETOS in Farsi script for goods in Classes 5, 16 and 24 of the Nice Classification.

Iranian company Pardast Paper Products Co's application to register the Farsi script mark was opposed by food and beverage giant PepsiCo Inc. PepsiCo argued that the mark was confusingly similar to its prior registered CHEETOS trademark in Latin script for goods in Class 30. The Trademark Office (TO) allowed registration and PepsiCo appealed.

At first instance, the court dismissed the appeal and upheld the TO's decision. It held that:

• the two trademarks did not cover identical classes;
  
  
• there were significant differences between the marks because Pardast's mark was a transliteration of the word 'Cheetos' in Farsi script, whereas PepsiCo's mark was in Latin script; and
  
  
• PepsiCo had failed to provide sufficient evidence that CHEETOS was a famous mark, meaning that even if the trademarks were held to be similar, the mark was only subject to limited protection within the specific class covered by the application.

PepsiCo appealed again and the Court of Appeal reversed the earlier decision. It rejected the first instance court's findings, stating that despite the lack of evidence that PepsiCo's CHEETOS mark was famous, this did not entitle other parties to register the mark for goods and services in other classes. In addition, it stated that Pardast's trademark (i) was confusingly similar to the prior registered trademark, and (ii) would lead to confusion as to the source of the goods covered by the mark, even though PepsiCo's earlier mark was in Latin script.

Mohammad Badamchi, HAMI Legal Services, Tehran