Imitation: Decision No 226/24.02.2011 of Commission for Protection of Competition (CPC)
Claimant: Hepi OOD – client of IP Consulting Ltd.
Respondent: Milanov Taksi 8111 EOOD
CPC initiates a procedure through correspondence No. CPC/977/2010 at the request of Hepi OOD against Milanov Taksi 8111 EOOD to ascertain the fact of infringement of rights according to Articles 29, 35 (1) and (2) from Protection of Competition Act (PCA), enacting ceasing of the infringement as well as imposing the sanctions set forth by the law.
Essence of the claim: Hepi OOD is registered on 19.03.2001 and since then the company has been present on the market of taxi services in the town of Russe and has been known with the slogan “TO4NITE” for which they have a registered trademark. Another distinctive feature of the company is a volumetric advertising signboard – a red pyramid with white ellipses in which the advertisement signs of the advertiser are put. This advertising signboard was registered on 13.07.2010 as a trademark before the Bulgarian Patent Office (BPO) with reg. No. 74797 and as an industrial design reg. No. 4732 with priority since 27.03.2002, and as Community Industrial Design RCD No. 001693276. The additional distinctiveness of the Hepi OOD automobiles is achieved also through inscriptions on the doors and a number for calling a taxi with specific font and colour combination – red digits (letters) stroked in white.
Hepi OOD claims that since the spring of 2010 Milanov Taksi 8111 EOOD, a rival company on the market of taxi services in Russe, has started a mass substation of its known white advertising signboards with black inscriptions with the typical of Hepi OOD red signboards with white inscriptions. In relation to the trademark Tochnite or Tochnite taksita Hepi OOD points that on 25.03.2002 it has filed an application for registration of trademark Tochnite taksita. On 12.05.2006 rival companies including Milanov Taksi 8111 EOOD founded Tochnite Taksita Corporation.
Position of Milanov Taksi 8111 EOOD: The Company challenges the claims of Hepi OOD and asks CPC to enact a decision with which to disregard the claim. The Company points that it has been dealing with taxi services since 1993. The defendant also points out that the use of the name Tochnite taksita by Hepi OOD is illegal. On 25.03.2002 Hepi OOD received Refusal by the BPO for registration of this name as a trademark because the latter has already been reserved by Tochnite Taksita Corporation (a member of which is Milanov Taksi 8111 EOOD). As far as the advertising signboard is concerned, the defendant indicates that the registered industrial design of the claimant refers to a four-sided prism with no set sizes whereas the signboard used by the defendant is three-sided pyramid. The defendant does not agree with the statements in relation to the phone numbers by pointing that the numbers of both firms are written clearly enough and cannot mislead the user.
Legal Conclusions: There are no applications/registered objects of industrial property on the name of the defendant. The established facts in total lead to the conclusion that there is an infringement of rights according to Article 35 (2) from PCA by Milanov Taksi 8111 EOOD, namely that it has used a firm, trademark or geographical indication which is identical or close to the one/s of another person/s in a way that can harm the interest of the competition.
D E C I S I O N O F C P C
- ASCERTAINS THE INFRINGEMENT OF RIGHTS according to Article 35 (2) from PCA by Milanov Taksi 8111 EOOD and IMPOSES A FINE in the amount of 555,00 leva.
- ENACTS A CEASING OF THE INFRINGEMENT mentioned in point 1 of the present decision.