The First Hall of the Civil Court, presided over by Mr Justice Mark Chetcuti, on December 11, 2012, in the case “AMA Company Ltd vs Tat-Taljan Company Ltd” declared, among other things, that defendant company Tat-Taljan Company Ltd violated AMA Company’s rights as a trademark holder of its mark Nanna Ravioli by using the name Ravioli Della Nonna on its ravioli.
The facts in this case were as follows:
Tat-Taljan Company was condemned to pay AMA Company a compensation of €5,000 for damages
The company AMA Company Ltd was the owner of several popular trademarks, such as Jubilee Foods and Nanna’s Ravioli, which were used on several of its food products.
The trademark Nanna’s Ravioli was registered in the Trademark Register in Malta, with the Directorate for the Registration of Industrial Property, registration No. 44378.
AMA Company used Nanna’s Ravioli continuously and prominently as from 2002, for pastry and frozen pastry items, in particular, ravioli, containing either Maltese cheese, Gozo cheese, spinach and cheese, mushrooms, pumpkin, meat or poultry and related products. It said that its trademark was well known in Malta.
Tat-Taljan Company Ltd also manufactured, distributed or imported and sold in Malta pasta products as well as ravioli under the name Ravioli Della Nonna.
AMA Company complained that this name was identical to its own mark Nanna’s Ravioli; and that Tat-Taljan Company acted in bad faith in order to take advantage of its goodwill and industrial property rights.
It was stated that the words Ravioli Della Nonna on Tat-Taljan Company’s products created confusion in the mind of consumers and gave a false impression that Tat-Taljan Company’s products were in some way connected with AMA Company’s.
AMA Company requested Tat-Taljan Company to stop using its mark but the latter ignored AMA Company’s protest.
Faced with this situation, AMA Company proceeded by filing legal proceedings asking the court:
• To declare that Tat-Taljan Company violated its rights in terms of article 10 chapter 416 by using the mark Ravioli Della Nonna on its food products;
• To declare that the use of the trademark Ravioli Della Nonna constituted unfair competition in terms of article 32 of the Commercial Code;
• To liquidate the damages;
• To condemn Tat-Taljan Company to pay damages;
• To order Tat-Taljan Company to stop all acts in violation of its rights; not to sell products with the name Ravioli Della Nonna and to give such necessary measures; and
• To grant any remedy under chapter 488 and chapter 416 and the Commercial Code.
In reply, Tat-Taljan Company contested the legal action against it. It argued that its mark was different and distinct, and created no confusion between the products.
It disputed any resemblance and that its products could be mistaken for products of AMA Company, or give the impression that they were associated. It said that its products were well known both in Malta and Gozo.
Tat-Taljan Company denied any violation of AMA Company’s rights, that it acted in bad faith and that there was any unfair competition in the circumstances.
It said that AMA Company suffered no damages and accordingly, it should not be condemned to pay damages.
The First Hall of the Civil Court considered that AMA Company claimed to have started using the mark Nanna’s Ravioli before Tat-Taljan Company had launched its products on the market. AMA Company had registered the logo with the words Nanna’s Ravioli with effect from October 13, 2005.
It did not result that Tat-Taljan Company had registered its logo with the Comptroller of Industrial Property.
The products of both parties were of the same genre, though there were a number of differences: different shape and price; the size of the packaging was different; the “get up” of both products was different.
In Dr P. Valletta noe vs J Busutill et noe dated November 19, 2001 (CA) it was held that: “The answer to the question whether the sound of one word resembles too nearly the sound of another… must nearly always depend on the first impression for obviously a person who is familiar with both words will neither be deceived nor confused… Likelihood of deception is not disproved by showing that a careful person knowing both the plaintiff’s and defendant’s goods or business would not be confused. The impression that a trademark or device will make will also depend on whether the mark or device is descriptive, whether it is local or geographical in name and whether it contains elements which are common to the trade.”
If the general impression of the mark was identical, there could be confusion, despite differences in the detail: re. Dr L. Sansone noe vs P. Cassar Torreggiani et noe (Nutella Chocolate) (CA) dated November 15, 2005. In Dr P. Manduca vs Consolidated Biscuits Co. Ltd (PA) dated March 30, 2011, the court maintained it was a question of fact whether the two marks could be mistaken. There was no need for the words to be identical. It was enough if the resemblance could lead to confusion, by the “ordinary” consumer, or the possibility that the products were associated; re. Vassallo vs Caruana, January 7, 1950.
The court noted that legal action under chapter 416 was to protect a trademark while legal action under article 32 of the Commercial Code was to prevent unfair competition, among traders.
The court considered that phonetically Ravioli Della Nonna and Nanna’s Ravioli were very similar and could give rise to confusion. Consumers could be misled to believe that Tat-Taljan Company’s products were associated with AMA Company.
There was no proof that Tat-Taljan Company used the words Ravioli Della Nonna before the company’s Nanna’s Ravioli. The court had its reservations why Tat-Taljan Company chose to use the mark Ravioli Della Nonna. It did not believe that it was not aware of AMA Company’s mark. Both companies had similar products; traded in the same sphere and supplied the same supermarkets.
In Kerley’s Law of Trademarks and Trade Names: “In relation to registered trademarks, the relevant standard is to be found in Lloyd Schuhfabrik Meyer & Co. GmbH vs Klijsen Handel BV Case C-342/97 [1999], which was considered and adopted by the Court of Appeal in Bach Flowers Remedies vs Healing Herbs [2000 R.P.C 513] (in the context of distinctiveness). The relevant person, according to Lloyd [In particular, para. 27 of the judgment], is the average consumer, who is considered to be ‘reasonably well informed and reasonably observant and circumspect’, although taking account of the fact that such a person will rarely have the opportunity to make a direct comparison but rather has to rely on ‘the imperfect picture on them that he has kept in his mind’. It is also relevant that the average consumer’s level of attention is likely to vary according to the category of goods or services in question”.
“When the question arises whether a mark so resembles another mark as to be likely to deceive or cause confusion, it should be determined by considering what the leading characteristic of each is. One might contain many, even most, of the same elements as the other, and yet the leading, or it may be the only, impression left on the mind might be very different. On the other hand, a critical comparison of two marks might disclose numerous points of difference, and yet the idea which would remain with any person seeing them apart at different times might be the same. Thus it is clear that a mark is infringed if the essential features, or essential particulars of it, are taken.” (De Cordova vs Vick (1951) 68 R.P.C., PC).
The court was of the opinion that the ordinary buyer would be mistaken in the circumstances.
For these reasons, on December 11, 2012, the First Hall of the Civil Court gave judgment by accepting the company’s requests. The court did as follows:
• It declared that Tat-Taljan Company Ltd violated AMA Company’s rights as a trademark holder of mark 44378 under article 10 of chapter 416 and this as regards the use by Tat-Taljan Company of Ravioli Della Nonna on its food products including ravioli.
• It declared the use of Ravioli Della Nonna by Tat-Taljan Company to be unfair competition vis-à-vis AMA Company in terms of article 32 of the Commercial Code.
• It ordered Tat-Taljan Company to stop, with immediate effect, selling its products as Ravioli della Nonna. The court said there was no need for Tat-Taljan Company to recover its products from the market for a period of three months from the date of its decision. After the lapse of three months, it had to recall its products, if still unsold.
The court, in addition, condemned Tat-Taljan Company to pay AMA Company a compensation of €5,000 for damages under article 12 of chapter 488 and article 37 of chapter 13. Tat-Taljan Company had to pay a further €600 to cover the cost of an abridged copy of this decision in local newspapers.
Dr Karl Grech Orr is a partner at Ganado & Associates.