Maltese Courts on Unfair Competition and Unlawful Use of Marks
News    ·   22-08-2016

AUTHOR: Sharon Xuereb

On the 5th of July 2016 the First Hall of the Civil Court decided on proceedings instituted by Eden Leisure Group Limited in 2006 against Sign-In Ltd et on the grounds that the use of the words “Arena” was in violation of Article 32 of the Commercial Code of Malta, which prohibits traders from making use of a name, mark or distinctive device capable of creating confusion with any other name, mark or distinctive device lawfully used by others, even if such name, mark or distinctive device is not registered in terms of the Trademarks Act, arguing that the use of such words created confusion with its own use of the words “Eden Arena”.

The Court stated that the name of a person or words forming part of the common stock of language may become so far associated with the goods of a particular maker that its use by another maker would create confusion. However, the popularity or fame must be strong enough that the generic name is easily associated with the product, whilst the burden of proving this lies on the party alleging it. In the Court’s opinion, while the combination of “Eden” (as a mark highly distinctive of the plaintiffs’ business in Malta) with some other number, such as “Eden One”, would have probably created confusion in the general public, the same cannot be easily said with the combination of the generic word “Arena” with the number “One”. For this to arise, it must be proven that the word “Arena” assumed a secondary meaning in the Maltese market, such that it is associated with “Eden Arena”. In the Court’s opinion, Eden did not put forward sufficient proof to establish this.

Eden also failed to contradict the findings of a quantitative research survey on Maltese Consumers’ perceptions of the term “Arena” presented by the defendants, the results of which greatly supported the defendants’ argument that there is little correlation between the word “arena” and the Eden Arena in the public’s mind.

The Court therefore found no unfair competition on the part of the defendants with the use of the words “Arena One”, and consequently, no liability for damages on their part.

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