Johnson & Johnson wins exclusive use of VELBAND

US company Johnson & Johnson has won a fight with the Iranian Trademark Office to register the mark VELBAND and, in the process, was able to obtain the cancellation of the same mark which had already been registered by a local company.

Johnson filed an application to register the mark in relation to medical bands and bandages. The Trademark Office refused the application because Bandhaye Pezashki had already registered the mark in relation to orthopaedic plasters and therefore there was a likelihood of consumer confusion.

Johnson sought cancellation of Bandhaye's registration, alleging that it had registered VELBAND in Italy long before Bandhaye's Iranian registration was granted, and had used the mark worldwide. Bandhaye defended its registration by arguing that the two companies' goods are completely different, so consumer confusion was unlikely.

The Iranian court hearing the case ruled in favour of Johnson, finding that (i) Johnson has prior trademark rights, and (ii) consumers would likely confuse the origin of the two companies' VELBAND marked goods. Thus, Bandhaye's registration was cancelled and Johnson's registration was granted.

Bandhaye did not appeal.

Mohammad Badamchi, HAMI Legal Services, Tehran