ShoeMark vs ShoeMarket – The Trademark Battle


On the 25th of November 2016, the Court of Appeal in Malta confirmed a previous judgment issued by the First Hall Civil Court back in 2012, whereby it has ordered a businessman to change the name of his shoe shop after being found guilty of breaching the trademark of his competitor, which trademark had been registered with the Intellectual Property Office within the Commerce Department in 2003.

Mr Attard, the owner of ShoeMark, commenced proceedings against the owner of ShoeMarket in 2012, as according to Mr Attard, ShoeMarket, the competing establishment, was creating confusion amongst consumers.

The Court heard how Mr Attard trademarked the name ‘ShoeMark’ in March 2003, and started operating his business shortly after. A couple of years later, Mr Micallef, approached Mr Attard with a business proposal, whereby Mr Micallef, the owner of ShoeMarket wanted to buy footwear from Mr Attard for the purpose of resale. Both parties agreed to this arrangement, however it has been noted that Mr Attard asked Mr Micallef several times to change the name of his establishment since this was creating confusion amongst the clientele.

The similarity in the names of the shops created so much confusion that the Court heard how at times clients turned up at Mr Attard’s shop holding adverts published by his competitor. The resemblance in the names also created mix-ups with the post whereby Mr Attard would receive post addressed to ShoeMarket and vice versa.

The Court quoted jurisprudence on trademarks including the European Court of Justice judgment 02 Holdings Limited and 02 (UK) Limited v. Hutchison 3G UK Limited. The Court of Justice in this judgment stated that “a proprietor of a mark may prevent the use of a sign which is similar to this mark if four conditions are satisfied: that use must be in the course of trade; it must be without the consent of the proprietor of the mark; it must be in respect of goods and services which are identical with, or similar to, those for which the mark is registered; and it must affect or be liable to affect the essential function of the trademark which is to guarantee to consumers the origin of the goods or services, by reason of likelihood of confusion on the part if the public.

To this effect, the Court established that the four conditions mentioned above have been infringed. Thus, the Court confirmed that Mr Micallef, the owner of ShoeMarket has breached the intellectual property rights owned by Mr Attard, by way of Article 10 of the Trademarks Act, establishing that Mr Micallef has infringed a registered trademark, consequently creating unfair competition. The Court has also requested Mr Micallef to change the name of his establishment with immediate effect.

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