Issue link: https://maltatoday.uberflip.com/i/788859
48 maltatoday, SUNDAY, 19 FEBRUARY 2017 Opinion T he First Hall of the Civil Court ruled that for two competing identical trademarks to be confusing they must feature predominantly and the plaintiff must prove that the use of the two will cause confusion. This was decided on 14 February, 2017 by Mr Justice Mark Chetcuti in Y Plan Events Ltd v Wow Ltd, Andrew Selvagi v Martina Selvagi. The plaintiff company explained in its application that it is the owner of the trademark "Sarah Young: I Do Weddings – since 2001". The company offers wedding planning services and had registered the trademark in January 2013. Before the registration the company used "Sarah Young: I Do Weddings" as a slogan. The plaintiff company discovered that Andrew & Martina Selvagi had incorporated a company iDo Weddings Malta Ltd and advertised as "I Do Weddings". They are in the same business of wedding planning and were acting in bad faith. This was in violation of the Trademarks Act and amounted to unfair competition and caused the plaintiff damages. The plaintiff asked the Court to declare that the defendants are in violation of the Trademarks Act by also using I Do Weddings and also to liquidate the damages. The defendants filed a statement of defence by stating that Andrew and Martina Selvagi do not trade in their own name but in the name of their company. They also contested that the words "I Do Weddings" should not be used exclusively by the plaintiffs and in fact it was the plaintiffs who used the brand "I Do Weddings" after they started using them. Irrespective of this there is no unfair competition. Mr Justice Chetcuti analysed the evidence produced and found Sarah Young started in the wedding planning business in 2001, and was well known in 2003. She incorporated Y Plan Events Ltd. She always used as a slogan "I Do Weddings" and advertised using this slogan. She presented magazines showing such adverts from 2003 to 2013. According to Ms Young's testimony she was known for the " I Do Weddings" slogan. She explained that she had first met the defendants Selvagi when they engaged Ms Young as their own wedding planner. The emails, business and the letterhead did not contain the slogan. Ms Young learned of her new competitors in 2012 and she noticed that the defendants were causing a confusion within the market. When she rebranded the plaintiff made use of "I do Weddings – Since 2001" as a trademark. The plaintiff 's testimony was backed by former clients of hers. Martina Selvagi also testified and agreed that she had engaged Sarah Young and knew her by that name and the engagement agreement was signed by Y Plan Events Limited. There was a dispute on the service rendered and Sarah Young refunded the deposit given. Ms Selvagi told the Court that she had got software in March 2011 from a US company called iDo Wedding and Event Professional and from there she go the idea of her company name I Do Weddings Malta Limited, which was registered with the MFSA and she has a website and a facebook page. She denied that any of her international clients confused her with someone else. She explained that she entered into an advertising agreement with the US company. The Court quoted from Article 32 of the Commercial Code, which reads: "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 other name, mark or distinctive device be not registered in terms of the Trademarks Act, nor may they make use of any firm name or fictitious name capable of misleading others as to the real importance of the firm." The Court further referred to a previous judgement, Dr P Valletta noe -v- Joseph Tanti, decided on 11 March, 1992, which held that competition must be between at least two people working within the same type of industry, the same time and area. If a person uses a mark and is the first to do so, then that should be his exclusive property. The Court quoted from a 1909 UK judgement Burberrys -v- Cording, which held: "The principles of law applicable to a case of this sort are well known. On the one hand, apart from the law as to trade marks, no one can claim monopoly rights in the use of a word or name. On the other hand, no one is entitled by the use of any word or name or indeed in any other way to represent his goods as being the goods of another to that other's injury." Mr Justice Chetcuti held that the plaintiff company failed to show the Court that there existed a confusion between the two companies. The plaintiff has been in the market before the defendant, but had to prove that it built its reputation on the "I Do Weddings" name. However, from the evidence produced this does not seem the case. From the adverts presented Sarah Young's name sticks out together with a description "The Wedding Planner". Then 'I Do Weddings' appears at the bottom of the advert and therefore, is not prominent. The witnesses also held that the service is given by Sarah Young and were referred to her directly. The evidence showed that the reputation of the company was built on the personality of Sarah Young. The "I Do Weddings" do not cause any confusion of the minds of consumers to identify the product, because the product is identified with Sarah Young. The Court moved to dismiss the plaintiff 's claims A planning application contemplating the change of use of a garage to a shop was approved by the Planning Authority. The premises are located in Triq Sir Arthur Burton, Mosta. Following permit approval, a number of residents living in the neighbourhood lodged an appeal with the Environment and Planning Review Tribunal, insisting that the permit ran counter to planning policies. In their appeal, the objectors contended that the applicant was already in possession of a busy commercial outlet located on the opposite side of the road. This meant that the applicant is the owner of two commercial outlets, the total area of which exceeded the maximum allowable area set out in policy CG07 of the relative Local Plan (namely 75 square metres). In view of this, the objectors maintained that the recent permit was tantamount to an 'extension' of an already busy commercial outlet. The objectors reminded the Tribunal that the Local Plan was designed 'to improve the urban environment mainly by means of policies that protect the amenity of all residential areas' adding that any new development should inter alia safeguard residential areas against over development. It was explained that careful control was needed to prevent nuisance to neighbouring properties and avoid localised traffic congestion within residential areas. Concluding, the appellants highlighted that the applicant's proposal was a threat to the residential character of the area since a large number of customers residing outside the immediate locality would visit the area. In reply, the Authority insisted that the permit was issued 'independently of any other existing use within the area'. The fact that the applicant was in possession of a hardware store on the opposite side of the street carried no material bearing. The Authority underlined that 'the envisaged impact is commensurate to that of a local small shop.' As a final remark, it was stated that such facilities tend to reduce the need to travel by encouraging shorter shopping trips, often on foot within residential areas. In its assessment, the Tribunal observed that the approved permit drawings showed a convenience shop. Consequently, the applicant was precluded from using the premises as an ironmongery. In any case, the new commercial outlet was not linked to any other establishment. The Tribunal went on to observe that the proposed convenience shop together with the store covered an area of 73 square metres, thus falling within the allowable 75 square metre limit. Moreover, the new permit was subject to a condition stating 'that the approved shop shall exclude grocer, supermarket, minimarket, butcher, fishmonger, confectionery and pharmacy.' After having regard to the aforesaid, the Tribunal concluded that the permit should stay. Dr Robert Musumeci is a lawyer and architect with an interest in development planning law Two shops permitted as long as not interconnected Robert Musumeci Approved permit drawings showed a convenience shop – the applicant was thus precluded from using the premises as an ironmongery Trademark must be predominant to be exclusive Malcolm Mifsud