Last week, the Court of Appeal presided over by Judge Lawrence Mintoff delivered a judgement that should be carefully considered by all those holding a trademark and lawyers working in the field of industrial intellectual property.
Te fit-Tazza, run by Craig McDonald is a company that has made a name for itself with its minimalist and colourful prints drawing inspiration from the local urban and natural landscape, along with other elements of the Maltese collective conscious. These include everything from the Pharoah Hound to old-school buses to the collection of poetry and prose that all those growing up in the 90s know all too intimately: Id-Denfil.
Tazza Te, run by Rachel Borg, is an entirely different company. A café situated in Hamrun, it is perhaps best known for its wide range of platters.
These two distinct companies are currently butting heads over trademark issues, with Te fit-Tazza objecting to Tazze Te’s request to get its branding recognised and protected, arguing that the names are far too similar. It therefore called for the request to be rejected on the ground that it has held a trademark over the ‘Te fit-Tazza’ name since 2018.
The Comptroller of Industrial Property, who is responsible for the database of local trademarks, argued that “the likelihood of confusion is very high” between the two brands, citing their “above-average to high level of similarity.”
Te fit-Tazza even submitted evidence of this confusion, in the shape of a screenshot where a consumer inadvertently tagged one brand instead of the other.
On the basis of the similarity and scope for confusion, in October 2022, the Comptroller rejected Tazza Te’s application to register its name as a trademark.
Speaking to WhosWho.mt, Ms Borg says she filed the suit in the Court of Appeal after the Trade Department refused to issue her a trademark over the ‘Tazza Te’ name: “We took them to court because I do not find their objection reasonable.”
However, Ms Borg contests this finding. She acknowledges that the similarity in names “could be confusing for people,” but adds that many shops have similar names.
“And in any case, Tazze Te is different from Te fit-Tazza.”
Her legal team also contested the validity of Te fit-Tazza’s objection, noting that it did not bear a date. While the Comptroller found this to be irrelevant, the Court did not share in this opinion, and eventually found in favour of Tazza Te’s appeal. It therefore ordered the Comptroller to re-evaluate the trademark application while disregarding any objections by Te fit-Tazza.
“So now it’s back on the trademark regulator to proceed as if no objection were raised. Now we need to see what happens from their end,” says Ms Borg.
WhosWho.mt also reached out to Mr McDonald, who admits that the ruling has been a disappointing one: “We are not happy with the ruling, since it allows the trademark we objected to to be registered.”
He continues: “We feel that the Trademark Comptroller was correct in their ruling the first time around,” adding that the case is yet further proof that the country “needs specialised courts and tribunals to be able to tackle niche topics more effectively.”
He says that together with his legal team, he is now weighting the steps to take next to better protect his brand.
Ultimately, he admits feeling disappointed about the judgement, describing the realisation that his trademark “is not really as safe as it seems" as “a kick in the teeth”.
A look inside the reasoning behind trademark assessments
The Court judgement quotes extensively from the Trademark Comptroller's original decision. In so doing, it presents a fascinating look into the factors the office takes into consideration when comparing trademarks.
In this excerpt, the Office of the Trademark Comptroller is considering the visual similarity between the marks:
"The Office notes an above-average to high level of visual similarity, for a number of reasons. The dominant word elements of both marks are ‘TAZZA’ and ‘TE’. The sequence of these word elements are placed in a different manner in both marks, with the inclusion of ‘fit-’ in the opponent’s mark. The applicant’s mark also features an apostrophe after the letter ‘e’ in the word ‘te’’.
"With regards to colour and design, both marks feature a rendition of a typical glass of tea, a Maltese tradition. The opponent’s mark represents the glass in a minimalistic streamlined design, and the applicant features the tea glass with more detail, and the inclusion of a teaspoon. Nevertheless, it is relevant to include that it is evident that both designs are graphically representing a Maltese Traditional Tea Glass.
"The stylised font of both marks is fairly similar, with the font colour also being fairly similar to one another. The background of both marks is different, with the opponent’s background being white and the applicant’s background being a shade of dark brown.
"Without prejudice to the above, the similarity stemming from the design, stylised font, representation of the graphical element and the word elements, the Office can conclude that an above average to high similarity is evidently predominant."
