BIC S.A. filed a case against a distributor in Lebanon who was importing and selling, on the Lebanese market, pens that were manufactured in Jordan under the trademark BEE. The BIC trademark has been registered in Lebanon since 1954. The defendant was instructed to cease importing the pens from their Jordanian manufacturer and to stop selling and marketing them in Lebanon. The defendant failed to comply.
The courts later ordered the defendant again to stop imports and sales of BEE pens, to withdraw the products from the market and to pay fines and damages. The products were impounded and the business enterprise was sealed. An expert was appointed to the case to provide advice and on October 7, 1999, the court issued a verdict to oblige the defendant to stop the import and sale of BEE pens and to pay damages of Lebanese Lira 6 million to the plaintiff. Foremost among the reasons for the verdict are the following :
The plaintiff claims fraudulent infringement under Article 97 onwards of decision No. 2385.
Even without the report of the expert, the court could easily see that BEE is phonetically similar to BIC especially as to the shape of the box, pens, colors used and general appearance.
Decision No. 2385 has given the courts the rights to estimate the extent of counterfeiting and infringement from the point of view of the consumer and placing more importance on the overall similarity rather than difference of trademarks elements.
There is an overall similarity between the trademarks BIC and BEE.
Trademark BIC is registered and is to be protected against counterfeiting in Lebanon since the owner has the right to prosecute for infringement.
Counterfeiting has been proven between BIC and BEE marks.
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