“Office 1 Superstore” has been on the Bulgarian market since 1998 through “Panda” cooperation. They have a significantly wide portfolio of trademarks, which makes them very well-known and reputable in Bulgaria.
At the end of the designated term for the trademark, they have reapplied. As a result, an opposition was filed against the registration of the trademark “Office 1”, with № 146934. The trademark applicant “Office1Superstores International LLC” is represented by the team of IP Consulting. The opposition, filed by “KARL STORZ SE & CO KG” was not upheld and was denied by the Bulgarian Patent Office (BPO).
The trademark applicant claims that there are no grounds for the opposition.
The trademarks are visually different considering their conception and visual designs. Furthermore, there was no real use of goods of Classes 9 and 16 bearing the trademark on which the opposition was based.
Class 9 covers machines, machine instruments, engines, etc. Class 16 concerns paper, cardboard and stationary, in general. “KARL STORZ SE & CO KG” main scope of business are endoscopes, medical instruments, and devices, all of which are goods covered by Class 10.
In accordance with art. 58 (3) of the Law on Marks and Geographical Indications, if within a period of five years following registration, the proprietor has not put the trademark to genuine use in connection with the goods or services in respect of which it is registered, or if such use has been suspended during an uninterrupted period of five years, the trademark shall be subject to the sanctions provided for in this Law, unless there are proper reasons for non-use.
The proof of use shall denote the time, place, duration, volume and nature of use of the trademark (T-287/13, Husky CZ v OHIM & 62). The evidence submitted by the opposition does not fulfill this requirement. All the goods they provide belong to Class 10, but not to Classes 9 and 16. What is more, they don’t provide a proper reason for non-use of the trademark in relation to those classes.
In light of all the given reasoning, the Bulgarian patent office (BPO) finds that the opposition shall be rejected.
The decision states that the opposed trademark is too broad for the relevant scope of business. It is used in relation to equipping the space in medical cabinets with machines, property of other brands and also Classes 9 and 16 are in practice, unused.
