BPO rejects opposition by Deutsche Telekom based on magenta colour mark

Bulgaria

The Disputes Department of the Bulgarian Patent Office (BPO) has rejected the opposition brought by Deutsche Telekom AG, the largest telecommunications company in Germany, against an application for the figurative trademark GLOBAL NET SOLUTIONS (No 113736) in Classes 35, 38 and 42 of the Nice Classification, filed by Bulgarian competitor Global Net Solutions.

The Disputes Department reversed the earlier decision of the BPO’s examining division, which had rejected the Bulgarian company’s trademark application on the basis of Deutsche Telekom's earlier magenta colour mark (Community trademark No 212787, covering Classes 38 and 42).

The Disputes Department carried out a two-step analysis to assess the similarity of the marks. It first determined the role of the colours in forming the overall impression and, secondly, compared the colours of both marks.

Considering that the earlier mark was a single-colour mark, the Disputes Department panel held that only a visual comparison between the marks was possible, and that such comparison should focus on establishing whether the colour magenta was actually present in the later mark and the extent to which that colour contributed to the overall impression of that mark. The panel took into consideration that consumers do not usually perceive colours as indicators of the origin of goods or services. Therefore, in order to find the marks similar, the colour of the later mark should have formed a significant part of the design and visually dominated the other components of that mark.

The panel found that the colours in the application (red and blue) only supplemented the verbal and figurative components, while the earlier mark consisted of a single colour, which was its only distinctive feature. Therefore, in terms of the overall impression, the marks could not be deemed to be visually similar - consumers would remember the later mark by its dominant verbal element 'Global Net', whereas the earlier mark would be perceived entirely as a colour.

The panel further based its reasoning on the finding that the marks contained different colours. According to the colour specification of the application, it contained the colours red and blue on a white background. In contrast, the earlier mark was described as 'magenta' or 'telemagenta'. The panel found that these colours covered different colour categories. Global Net Solutions' mark contained two primary colours (red and blue), while the earlier mark consisted of a secondary colour, which belonged to a different group of colours (violet) according to the RAL colour system.

Because of the lack of similarity between the marks, the panel concluded that there was no likelihood of confusion among consumers. The decision was not appealed and entered into force three months after it was issued.

Dimitar Batakliev, PETOŠEVIĆ, Sofia

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