OPPO v. Benetton: The “Colors” Trademark Dispute

The Cairo Economic Court has appointed an expert to examine the lawsuit brought by OPPO Mobile Telecommunications against Benetton Group S.r.l. over the parallel use of the same trademark.

Case documents show that OPPO Mobile Telecommunications filed its claim against Benetton Group S.r.l. on the grounds that both companies use an identical mark. Before ruling on the merits, the court assigned the on-duty trademark expert to review the case documents and the parties' submissions, then proceed to the Trademark Office at the Internal Trade Development Authority to examine the files of the two marks: "Colors" No. 305858 in Class 9, registered to the claimant, and "Colors" No. 723882 in Class 9, registered to the respondent.

The expert's mandate includes reporting on the classes of goods covered by the two marks, the dates and terms of registration, whether either mark is internationally well known and protected within Egypt, and whether either company has made genuine use of the mark during the five consecutive years preceding the report — including, where relevant, any justification for non-use, or the manner of use whether direct or under licence.

The court added that the expert's report must address whether a substantial similarity exists between the two marks sufficient to mislead the consuming public into associating the respondent's products with the claimant, and in general to verify the factual elements of the dispute. The expert was authorised to approach any governmental or non-governmental body and to hear the parties and witnesses; the claimant was ordered to deposit EGP 5,000 with the court treasury.

The ruling was issued under the presidency of Judge Mohamed Gouda Mohamed Abu Zeid, with Judges Soliman Fouad Ghobrial, Mona Ibrahim El-Tawila and Mohamed Mahmoud Fahmy, and court clerk Joseph Mikhail.