Snarls over ‘Dr Smile’ name

A judge in the High Court in Pretoria will have to decide who the real “Dr Smile” is after a Johannesburg dentist turned to the court to stop a fellow dentist from using the same name.

Hyde Park dentist Dr Zeyn Khan claimed in court papers he was the original “Dr Smile” and the registrar of trademarks should never have allowed rival Sandton dentist Dr Rawhani Faizi to register the “Dr Smile” trademark in his own name.

Khan wants the court to expunge the mark from the register and to interdict Faizi from using the “Dr Smile” trademark, or passing himself off as Khan or being associated with his practice.

The court recently granted an order joining the registrar of trademarks as a party to the application. Khan said in court papers he had appointed a marketing agent to assist him when he opened his private dental practice in 2006 and settled on calling his practice “Dr Smile”, which he linked to a telephone number when converted to letters to read Dr Smile.

He initially began advertising Dr Smile in the local community newspaper and wrote articles for medical magazines under the same name. He said after he began marketing Dr Smile through the internet on an international level in 2010, he established a countrywide reputation for the brand, and the majority of the public who used private dental healthcare associated the name with him and his practice.

Khan said he immediately sought legal advice when Faizi phoned him in March 2015, claiming that he was the registered owner of the “Dr Smile” trademark and warning him to remove the word from his advertisements and sign board.

He subsequently found out that Khan had registered the mark under his own name shortly before. Khan claimed Faizi had been well aware of his reputation as Dr Smile and had “disingenuously” applied for the registration “on the quiet” to take “unfair advantage” of the reputation he had already established and on which he had spent considerable resources.

He said the registrar should have refused Faizi’s application to register the mark as it infringed his common law trademark which he had been using for over a decade.

No date has yet been set for the court battle.

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