ORIOL held to be confusingly similar to L'ORÉAL
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The Third Branch of the Public Court of Tehran has ordered the cancellation of the trademark ORIOL (Case 641, August 27 2008).
Iranian company Kafaf Kala Co applied for the registration of the trademark ORIOL (Application 84110028) for services in Classes 35 and 39 of the Nice Classification (distribution, packing and export of soaps, perfumery, cosmetics and hair gels, among other things). The Trademark Office accepted the application and advertised the trademark for opposition purposes.
L'Oréal SA filed an opposition against the registration of the trademark ORIOL based on its earlier trademark L'ORÉAL, which is registered in Iran for goods in Class 3. L'Oréal argued that use of the mark ORIOL for the proposed services would confuse consumers. Kafaf refused to withdraw its application and L'Oréal filed an action for the cancellation of the trademark ORIOL.
The Third Branch of the Public Court of Tehran ordered the cancellation of the ORIOL mark on the following grounds:
- L'Oréal held prior rights in the L'ORÉAL mark in Iran;
- The ORIOL mark was confusingly similar to the registered trademark L'ORÉAL from a visual and phonetic point of view;
- Although the marks covered goods and services in different classes, the services covered by the trademark applied for related to goods which were covered by the L'ORÉAL mark; and
- The coexistence of the marks ORIOL and L'ORÉAL on the market would mislead consumers as to the origin of Kafaf's services.
Kafaf did not appeal and the decision is thus final.
Mohammad Badamchi, HAMI Legal Services, Tehran
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