Appeal Board issues interesting decision on assessment of distinctive character

Marbo Product, a Serbian producer and distributor of chips and baked products which is active in the Balkan region, holds several trademark registrations consisting of the verbal element ‘CHiPSY’. In October 2011 it filed an opposition before the Albanian Patent and Trademark Office (PTO) against the application for the registration of the international word mark CHIPS’Y KING in Class 29 of the Nice Classification ("potato chips").

Marbo based the opposition on its earlier international registrations designating Albania, namely:

• the word and device mark CHiPSY (International Registration 1041331);
• the word and device mark CHiPSY PAPRIKA (International Registration 923684);
• the word and device mark CHiPSY CHILI (International Registration 929513); and
• the word and device mark CHiPSY CHEDDAR (International Registration 929514).

All marks were registered in Class 29, among others.

Marbo claimed that confusion would inevitably occur due to:

• the similarities between the marks, which are used for identical goods; and
• the low level of attention of consumers when purchasing the goods.

Marbo also proved that its marks had been put to genuine use.

The applicant, Macedonian chips producer DPTTGU MDZ ROBIN, argued that the co-existence of the marks would not cause a likelihood of confusion.

The Appeal Board of the PTO found that the marks were confusingly similar and ruled in favour of the opponent. The decision became final because the applicant did not appeal within the prescribed period of time.

In its decision, the board made some interesting comments - namely, the board emphasised the importance of identifying the distinctive character of the marks when assessing the likelihood of confusion. This is in line with EU criteria and can be regarded as a step forward for Albanian practice because, previously, the board did not pay specific attention to this factor.

The board also focused on the issue of the distinctive character of marks consisting of foreign words. The board stated that words that have a specific meaning in a foreign language do not automatically convey the same meaning to Albanian consumers. The board thus rejected the applicant’s argument that the CHiPSY mark lacked distinctiveness because it derives from the English word ‘chips’.

Additionally, the board made a clear distinction between words that have become familiar in Albania and those that have not - it ruled that words that have entered the Albanian dictionary or are broadly recognised in the country will be considered as having become familiar among Albanian consumers. This is another remarkable step, considering that, previously, the board treated every mark consisting of English and Italian words as descriptive, without considering whether or not the words had become familiar in Albania.

The board further established that one of the factors that should be taken into consideration when assessing the distinctive character of a mark is its use; it ruled that a mark can acquire distinctive character through use and advertisement. After examining the evidence of use submitted by Marbo, the board found that the verbal element 'CHiPSY' enjoyed an enhanced distinctive character.

The board’s reasoning seems to be in line with the criteria established by the EU authorities. However, it remains to be seen whether Albanian practice will follow this decision in the future.

Irma Cami, PETOŠEVIĆ, Tirana