December 11 2006
Rothmans owns the trademarks ROTHMANS ROYALS and ROTHMANS ROYAL in international class 34. Independent Tobacco filed a trademark application for the mark BUSINESS ROYAL covering all goods in international class 34.
Rothmans claimed ownership of the ROTHMANS ROYALS and ROTHMANS ROYAL trademarks, and argued that the mark which Independent Tobacco sought to register was intentionally similar to its own trademarks.
Independent Tobacco claimed that the goods covered in each case were very different. Moreover, although the world 'royal' was included in each of the marks, the differences between them were sufficient to make them distinctive.
Believing that the word 'royal' would not cause confusion among consumers, the court ruled in favour of Independent Tobacco.
Rothmans filed an appeal against the final court decision. It argued that only the words 'Rothmans' and 'Business' were distinctive. It further argued that its trademarks, which were registered in Iran nine years ago, comprised not only the words 'Rothmans Royals' but also a design, and that Independent Tobacco has merely changed the words 'Rothmans' to 'Business' and used the same design. The similarities in the design and in the goods covered would confuse consumers as to the source of the product.
The final decision was issued in favour of Rothmans and ordered the cancellation of Independent Tobacco's application.
The court decision was published on August 29 2006 in the Official Gazette.
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