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Mauritius: A case analysis on ‘trade names and trademarks’

16 October 2023
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Introduction

The plaintiffs run beauty parlours under the trade names of ‘Heavenly Shalom Spa’, ‘Shalom Spa’ and ‘Shalom Hair & Beauty’ and also run a spa under the name ‘Shalom Hair & Beauty’. For the past 9 years, the plaintiffs have provided services and beauty products associated with the trade name ‘Shalom Spa’.

The plaintiffs complained that clients were confused regarding a separate spa business run by the defendant under ‘Shalom Esthetique & Spa’ as being linked to Shalom Spa.

The plaintiffs applied for the registration of the trademark Shalom Spa and obtained trademark rights. However, the defendant continued marketing itself using Shalom Spa and Shalom Esthetique and Spa.

The Case

Plaintiffs’ argument

The plaintiffs argued that the defendant must be prohibited from trading itself or its business under the name Shalom Spa and/or Shalom Esthetique & Spa since this was causing much prejudice to the plaintiffs’ business, which damages could not compensate.

Defendant’s argument

The defendant’s case was that the words ‘Shalom’ or ‘Shalom Spa’ are universally used by spas worldwide. The defendant admitted that initially, it was operating its business under the trading name ‘Shalom Esthetique Ltd’, which was changed to ‘Shalom Esthetique and Spa Ltd’. The defendant argued that the plaintiffs made a mistake by describing the defendant’s business as ‘Shalom Spa’.

Case Analysis

The learned judge emphasised that there is a distinction between a trade name and a trademark. Section 98 of the Industrial Property Act 2019 (the Act) caters for the rights for trademarks, and section 104 of the Act provides for the protection of a trade name.

The learned judge affirmed that even if the trade name was not registered, it was protected from the unlawful act of a third party.

Based on the evidence, the learned judge affirmed that the plaintiffs have been trading under the name of Heavenly Shalom Spa, Shalom Spa and Shalom Hair & Beauty and were, therefore, tradenames of the plaintiffs, which were protected under the Act.

Given that the plaintiffs had registered the trademark Shalom Spa, they had trademark rights. Since the defendant was trading under Shalom Esthetique and Spa Ltd, the use of both names bears similarities.

Held

The learned judge concluded that since both the plaintiffs and the defendant were in the same line of business, this was causing confusion in the minds of the public.

In addition, evidence ushered in by the plaintiffs have remained unrebutted regarding queries made by the plaintiffs’ customers regarding the opening of another spa of a similar trade name.

The plaintiffs were, therefore, entitled to the protection and trademark rights of Shalom Spa. The defendant was ordered and prevented from operating its spa business with a similar trade name.