IP Consulting filed an apeal against the decision of the Bulgarian Patent Office for registration refusal of application № 136521 DMV, for services in class 39. Proprietor of the processed trade mark is G S Commerce Ltd.
The opposition against against the registration of trade mark application № 132028 DMV is filed by OMV Aktiengesellschaft, Austria. The opponent based the opposition on earlier combined EUTM № 221598 OMV, registered for the goods and services in classes 1, 2, 3, 4, 6, 7, 11. 17, 19, 36, 37, 39, 40 and 42.
The provision of art. 12, par. 3 of LTGI states that registration of a trade mark shall be refused where there are:
– earlier trademark rights
– identity or similarity between the goods or services of the trade marks
– identity or similarity between the trade marks in conflict
– likelihood of consumer confusion.
The elements of the factual composition of the provision are cumulative and the lack of any of them renders art. 12, par. 3 of LTGI.
The actual use of a trade mark must take place in the territory for which the trade mark is registered. Therefore, where the earlier mark is EUTM, the use must be effected within the territory of the European Union. The Commission considers that EUTM No 221598 OMV, was actually used during the relevant five-year period in respect of the goods and services which it was registered for.
Comparison of the services of the conflicting trade marks shows that there is an identity between them.
It is clear from the depiction of the signs that a dominant element in their composition cannot be distinguished. The analysis of the trade marks should be made based their distinctive elements.
In visual perception of the signs, a difference exists in the initial sounds “d” and “o”. In addition to its word element, the process trade mark also affects through its graphic representation. There is specific colour layout as well as a figurative element. It is not devoid of distinctiveness. Thus, the differences in the graphic layout of the signs and the different first letter of the short word elements determine different visual effects.
Furthermore, from a phonetic point of view, in the overall pronunciation, the trade marks will be interpreted by Bulgarian consumers as “di-em-vi”, respectively “o-em-vi”. Hence, the signs are characterized by a different first sound.
Therefore, despite the identity of the compared services, there is no likelihood of consumer confusion due to the lack of similarity between the signs.
From the foregoing factual and legal side, it can be concluded that the appeal against the decision for a complete refusal for registration of trade mark application № 132028 DMV is well founded. The contested decision must be cancelled.
