On the 14th of February 2017, Mr Justice Mark Chetcuti who presided over the First Hall of the Civil Court in the case of Y Plan Events Ltd vs Wow Ltd, Andrew Selvagi and Martina Selvagi, ruled that for two competing identical trademarks to be confusing both trademarks must feature predominantly and the plaintiff must evidence that the use of the two will create confusion on the part public.
The plaintiff company, owned and represented by Sarah Young, explained how Y Plan Events Ltd is the owner of the trademark “Sarah Young: I Do Weddings – since 2001”, whereby the trademark has been registered in January 2013 and covers services relating to wedding planning services. Before the official registration of the trademark, the company used “Sarah Young: I Do Weddings” as a slogan of the company.
In 2012, the plaintiff company discovered that Andrew and Martina Selvagi had registered and incorporated the company “iDo Weddings Malta Limited” and advertised their company by way of an “I Do Weddings” slogan. The plaintiff company stated that both companies are in the same business of wedding planning and thus the defendants were acting in bad faith and violating the Trademarks Act.
Mr Justice Chetcuti analysed the evidence which was brought forward and found that Sarah Young started in the wedding planning business in 2001 and was well established by 2003 when she incorporated her company and started using the “I Do Weddings” slogan. Ms Young presented magazines and adverts from 2003 to 2013 to prove her point. Ms Young also mentioned that she re-branded her company and made use of “I Do Weddings – Since 2001” as a trademark. Ms Young asked the Court to declare that the defendants, Andrew and Moira Selvagi, are in violation of the trademarks act by making use of the “I Do Weddings” slogan and also to liquidate damages.
The Court quoted Article 32 of the Commercial Code by which it states that “traders shall not make use of any name, mark or distinctive device capable of creating confusion with any other name, mark or distinctive device lawfully used by others, even though such name, mark or device may not be registered in terms of the Trademarks Act, nor may the make use of any firm name or fictitious name capable of misleading others as to the real importance of the firm”.
The Court also made a mention to previous judgments, Dr P Valletta noe vs Joseph Tanti decided on the 11th of March 1992 and Dr George Hyzelr noe vs Borg and Aquilina Limited decided on the 13th of July 2011, which held that competition must be between at least two people working within the same type of industry during the same time and within the same area. A mention to the predominant feature of the mark was also made in the latter case, and if such feature does not leave a predominant impression there will be no likelihood of confusion on the part of the public and thus the similar mark may not be opposed.
Mr Justice Chetcuti held that that the plaintiff company failed to show the Court that there existed a confusion between the two companies as although Ms Young has been in the wedding planning market before the defendants, Ms Young had to prove that her company built its reputation on the “I Do Weddings” slogan. From evidence which the plaintiff produced, it transpired that Sarah Young’s name sticks out together with the description “The Wedding Planner”. “I Do Weddings” then features non-prominently at the bottom of the advert. The evidence showed that the reputation of the plaintiff company was built on Sarah Young’s personality and not the “I Do Weddings” slogan. Thus Mr Justice Chetcuti concluded that the “I Do weddings” slogan does not cause any confusion on the part of the public due to the fact that the plaintiff company’s product is directly identified with Sarah Young.
In view of the above the First Hall Civil Court moved to dismiss the plaintiff’s claims since the trademark must be predominant to be exclusive.