Home News & Events IP NEWS: Maltese Court upholds ‘Santa Lucia’ Trademark Appeal

IP NEWS: Maltese Court upholds ‘Santa Lucia’ Trademark Appeal

Friday, 02 December 2011 14:48

On 30 November, 2011, the Court of Appeal in Malta as presided by Mr Justice Dr.  Raymond C. Pace upheld the appeal filed by Santa Lucia Products Limited against the Comptroller of Industrial Property.

In brief, Santa Lucia Products Limited, a well established Maltese company with an excellent reputation in the catering sector, has submitted an application on 16 June 2009 for the registration of the wording ‘Santa Lucia’ as it appeared on a label specifically designed for the applicant company, in class 16, which application was rejected by the Comptroller of Industrial Property on the basis that Santa Lucia, S.A.  Compania de Seguros, a Spanish registered company providing inter alia business management, financial services and consultancy, had already registered two trade marks, they being ‘Santa Lucia, S.A. Compania de Seguros’ and ‘Seguros Santa Lucia’.

Santa Lucia Products Limited argued that the Comptroller of Industrial Property was not correct in refusing its application since the registered trade marks could not be deemed to be similar especially when considering the overall impressions thereof.  Even more so, there could never be any possible likelihood that the two trademarks could ever lead to any confusion when it has been well established that the average consumer normally perceives a mark as a whole and does not proceed to analyse its various details.

Tanti-Dougall & Associates, Advocates were legal advisors to the appellant Maltese based company, Santa Lucia Products Limited.