Kraft Foods obtains partial cancellation of local company's mark

Kraft Foods Schweiz Holding GmbH brought a court action against Iranian company Dadash Baradar Mohandes Biuck Company for partial cancellation and removal of the mark MELIKA (registration No 183182) in Classes 30, 35 and 39 of the Nice Classification (File No 9109980226300390; judgment No 9309970221200558, July 28 2014; notice of cancellation: November 12 2014).

Kraft Foods brought the action based on several prior registrations for MILKA and for variations of MILKA (and device) in Iran.

The defendant did not respond to the action and the court issued a default judgment for partial cancellation of the mark MELIKA in Classes 30, 35 and 39.

Subsequently, the defendant filed an appeal before the First Instance Court, claiming that the marks MILKA and MELIKA were not confusingly similar and that the covered goods were sufficiently different. However, the court dismissed the appeal and upheld the judgment.

The defendant filed a further appeal before the Court of Appeal. The Court of Appeal also dismissed the appeal and upheld the first instance decision for partial cancellation of the mark MELIKA. However, the registration of the device for the mark remains valid and protected.

It should be noted that, although the MELIKA mark was partially cancelled by the courts, the defendant holds several other registrations for MELIKA in Class 30 in Iran. It is highly recommended that trademark owners conduct a comprehensive trademark search so as to include all conflicting registrations in court cancellation proceedings, in order to avoid unnecessary cancellation actions in the future.

Mohammad Badamchi, HAMI Legal Services, Tehran

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