After an opposition filed by Fibank (First Investment Bank AD) through the team of IP Conuslting, the Bulgarian Patent Office refused the action of the international trademark “YES” with reg.No. 1513661 on the territory of the Republic of Bulgaria. The action applies to all goods and services in Classes 9, 35, 36, 38, 41 and 42.
The decision is in connection with an opposition filed by IPConsulting on behalf of First Investment Bank AD. The opposition is based on an earlier trademark “YES” – combined with priority from 23.05.2012, registered on 07.01.2013.
The opposition was filed on the grounds of Art. 12, par. 1, item 2 of the Law on trademarks and geographical indications, according to which a trademark shall not be registered:
“where, because of its identity or similarity with an earlier mark and the identity or similarity of the goods or services of the two trademarks, there is a likelihood of consumer confusion, which includes the possibility of associating with the earlier mark.“
Goods and services of the conflicting trademarks
The opinion of the Opposition commission of the Patent Office is that all attacked goods and services of classes 9, 35, 36, 38, 41 and 42 are identical and similar to the goods and services for which the opponent’s earlier trademark was registered.
Trademark signs
The conclusion is that there is a visual similarity between the compared signs – both marks contain the identical letters “Y E S”. Phonetically, as well as semantically, the earlier national trademark and the attacked international trademark are identical.
Degree of attention of relevant users
According to the Court of Justice, the average consumer is relatively well informed, moderately observant and careful when choosing a purchase. It should be born in mind that the level of attention varies according to the relevant category of goods and/or services (CJEU Decision, C -342/97 Lloyd, paragraph 26).
In the present case, the Opposition commission considers that, given the nature and purpose of the goods and services for which identity or similarity has been established, the level of consumer attention will be raised above that of the average consumer. Due to the similarity of international trademark “YES” reg.No. 1513661 with the earlier national trademark registration, reg.No.82958 and the identity and similarity of their goods and services, there is a likelihood of consumer confusion.
Therefore, the Patent Office refuses to recognize the effect of the attacked international trademark on the territory of the Republic of Bulgaria.
