Can Expedited Patent Examination be Considered Trademark Infringement?

I hope the above title gets you interested in reading more.

al attar al attar 2

Our Jordanian patent attorney friends Qumsieh report that TARIQ QUDSI ALATTAR Co., the owner of the mark ALATTAR which was registered in the Jordan trademark register in classes 31, 30, and 5 on 5 December 2004, initiated a cancellation action against the Jordanian trade name “Al Attar Al Rashhek” registered to Mahmoud Ebraheem Saleh & Co., on 16 June 2008. Both companies provide similar services.  According to Qumsieh, in Arabic, the word “Al Attar” means druggist and “AL Attar Al Rasheek” means the graceful druggist. (the translations come from Qumsieh. I don’t know if druggist means pharmacist, anesthetist or narcoticsist, nor do I know how any of these professions can be considered graceful.

In Hebrew, Al Attar means expedited, and is the term used for expedited patent examination. (Now readers lacking Semitic language skills may be able to understand the title of this post).

It transpires that in Jordan, when an application for a trade name is applied for, it is examined within the Commercial Names Register only, without reference to the Trademarks Registry for any conflicting prior trademark registration. When applying for the registration of a trademark, however, the application will be examined by Trademark Registry as well as the Commercial Names Registry. (This state of affairs is similar in Israel. Any unique name can be registered as the name for a limited company, regardless of trademark considerations).

In Jordan, a cancellation action against a commercial name is possible within five (5) years from the date of filing the application and it can be based on prior trademark registration in Jordan or aboard. In this case, the prior use in Jordan was considered a strong factor, which could aid the removal of a commercial name from the register.

Qumsieh filed a cancellation action against the commercial name “AL Attar Al Rasheek”, based on prior use and registrations in Jordan and abroad, and after full litigation, the Registrar of Commercial Names ruled for the cancellation of “Al Attar Al Rasheek” in the name of Mahmoud Ebraheem Saleh and Co. No appeal was submitted to the Supreme Court within the allowed time (i.e. 20 days), therefore the said decision has become final.

COMMENT

If in Arabic, the term Alattar means pharmacist, how could it be registered as a trademark? Isn’t it generic?

I asked Mohamed, the puncture-macher who mends my tires when I drive over screws and nails, etc. According to him, the word has two guttural letters (Arabic equivalent of ‘Ayin), so doesn’t sound exactly like Al Atar in Hebrew. He contends that the term means natural healer, so perhaps naturopath is a better translation. That as may be, after I gave him a crash course in trademark law, we decided that Al Attar is descriptive and generic and should therefore be about as registerable as a trademark in Jordan as puncture-macher of puncture repairer is in Israel. In other words, the mark should have been cancelled.

So where does this leave us? Presumably Jordanian standards of registerability are different than in Israel. Presumably the Qunsiehs know a thing or two about furthering their clients’ business interests. Nevertheless, the decision seems to be wrong.

That said, I suppose Teva Trufot could be translated as nature medicine. The idea of Teva being able to obtain an injunction against a company using the word teva meaning nature, together with additional words doesn’t seem so far fetched.

4 Responses to Can Expedited Patent Examination be Considered Trademark Infringement?

  1. Benny says:

    According to the Oxford English dictionary, Attar means a perfume oil or essence (as in “Attar of roses”). The origin of the word is Arabic, where it has the same meaning. In Arab countries, a century ago, pharmacists sold perfumes and medicines (of dubious origin and effectiveness), and sometimes took the surname “Attar”, as it was common for people to adopt their profession as a second name (in Europe too – as in “Goldsmith” or “Miller”). Since this profession was not uncommon among the Jews of Iraq, there are a number of Israelis bearing this name, as well as residents of other Middle Eastern countries. I speak as one whose grandfather was a pharmacist in Mosul, Iraq, in the first half of the last century.
    Benny Attar.

    • Benny,

      My ex-Secret Service Security neighbour also translated the word as perfumer.

      It therefore seems to be a profession somehow relating to plant essences and essential oils. I am willing to bet that from country to country and other time, the exact usage will change slightly.

      Quaker is distinctive to oats, but farmer or agriculturist may be generic to vegetables. The name here is being used for branding. purposes. I suspect that as an Attar yourslef, the company in Jordan would have a problem with stopping you acting in such a capacity.

      Are herbal extracts and food supplements the product of an Attar? I don’t know.

      • Benny says:

        “..as an Attar…the company would have a problem with stopping you…”
        Not at all. See http://abcnews.go.com/2020/story?id=123793 – Journalist Bill Wyman was asked to stop using his own name by Rolling Stones bass player Bill Wyman the unoriginal. While on the subject of legal befuddlement, did you see US8240155? in 2012 the USPTO granted a patent for the method of pouring a cold beer (by chilling the glass first).. Never would have occured to anyone before. No coincidence the “inventor” is an Aussie.

      • There’s a patent attorney I meet up with from to time at conferences called Roger Moore, which makes one wonder if his practice consists of the type of gadgets OO7 used.

        There is, of course plenty of case-law on the subject. Someone called McDonald won’t get away with opening a burger bar under his own name in most jurisdictions, but could probably sell dry goods, or be a fishmonger or green-grocer.

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