Unilever obtains cancellation of RUX based on well-known LUX mark

Unilever NV brought a court action against Mahluran Company for the cancellation of its registration for the trademark RUX for goods in Class 3, based on registrations for the well-known trademark LUX (in English and Persian) in Iran.

Unilever has been the owner of registrations for LUX since 1952 and for LUX in Persian transliteration since 2004 in Iran; it has widely used the trademarks on the Iranian market. Lux has become one of the most successful brands in the world for cleaning products, especially soaps. The Lux soap became well known due to Unilever’s advertising and investment activities, and is offered for sale in more than 100 countries around the world, including Iran. The LUX trademark is of great importance to Unilever in relation to sales and income in Iran. The Lux soap is widely advertised in Iran, and has gained fame and reputation among Iranian consumers.

Mahluran, an Iranian company, registered the trademark RUX (in English and Persian) for goods in Class 3 in May 2003 and renewed the registrations in 2013.

Unilever brought a cancellation action against RUX based on its prior registrations for LUX and on the fame and well-known status of the LUX mark for goods in Class 3 in Iran. Unilever also relied on the alleged bad faith of the Iranian company in adopting and using a confusingly similar mark.

Unilever further argued that, due to extensive use, advertising and investment throughout the years, the LUX mark had gained reputation and fame, and thus enjoyed protection under Article 32(h) of the Patents, Industrial Designs and Trademarks Law and Article 6bis of the Paris Convention.

In response to Unilever’s cancellation action, Mahluran argued that:

• RUX in Persian transliteration had an earlier filing date than LUX in Persian transliteration;

• Unilever had not contested the RUX registration for over 10 years; and

• LUX and RUX are not confusingly similar for local consumers.

Mahluran also brought a counter-action for cancellation of Unilever's LUX mark in Persian transliteration based on its prior registration for RUX in Persian transliteration.

The Court of First Instance ruled in favour of Unilever and ordered the cancellation of the RUX registration, finding that the LUX trademark is well known for goods in Class 3 and has a prior registration date in Iran.

The court also dismissed Mahluran's counter-action, holding that although the registration for LUX in Persian post-dated the registration for RUX in Persian, the LUX trademark was a well-known mark in Iran and enjoyed broad legal protection, and LUX in Persian had been used extensively by Unilever in Iran before the application for RUX was filed.

Mahluran filed an appeal, but the Court of Appeal upheld the first instance judgment without any further findings (Files Nos 9209980226300324 and 9209980226300823; Judgment No 9309970226300418, September 14 2015).

Mohammad Badamchi, HAMI Legal Services, Tehran