Global electronics and technology service provider successfully opposes registration of nearly identical mark

Sky Capital Limited (Grand Cayman), a global electronics and technology service provider that delivers mobile electronic devices in over 20 countries, including the United States, China, Australia and many countries throughout Europe, Southeast Asia, South Asia, the Middle East and Africa, has obtained a positive decision from the Romanian Trademark Office (OSIM).

A Chinese individual applied for the registration of the trademark OPPO (No M 2014 01116), depicted below, for "mobile telephones, tablet PCs and accessories, telephone covers, protection layers for telephones, chargers, data cables and accumulators" in Class 9 of the Nice Classification.

Sky Capital filed an opposition against the application based on its Community trademark OPPO (No 011857562), depicted below:

Sky Capital's mark was registered for "computers; electronic pocket translators; video disc players; power amplifiers; cabinets for loudspeakers; speech reread apparatus; telephone apparatus; incoming call displays; television apparatus; (audio) CD players, radios, loudspeakers, cassette players, video tape players, MP3 players; computer software not related to intellectual property rights and mobile telephones; phonograph records, compact discs and pre-recorded audio tapes; re-writable and recordable optical discs; pre-recorded video tapes and video discs; blank compact discs, audio tapes and video tapes; audio conferencing equipment comprised of headphones, wire and wireless microphones, audio mixers and accessories therefor; video cameras and accessories therefor, video monitors and accessories therefor; video conferencing systems comprised of video monitors, video cameras, video controllers, cabinets, microphones and accessories therefor, video projectors and accessories therefor, large screen video display units and accessories therefor; video printers, video camera housings, camcorders; computer game programs; phototelegraphy apparatus; portable telephones; satellite navigational apparatus; switchboards; sound transmitting apparatus; headphones players; DVD-portable media players; cameras (photography); flashlights (photography); wires (telephone-); plugs, sockets and other contacts (electric connections); connections, electric alarms batteries, electric battery chargers; none of the foregoing being in respect of sporting goods" in Class 9, and "games (not in respect of sporting activities) adapted for use with television receivers only" in Class 28.

Sky Capital's arguments were mainly as follows:

• The trademarks were identical from a visual, phonetic and semantic point of view, taking into account the fact that the mark applied for reproduced (without any additions) all the constitutive elements of the earlier mark and that, when seen as a whole, the differences between the marks were so small that they were negligible (see the decision of the European Court of Justice in LTJ Diffusion (ARTHUR ET FÉLICIE) (Case C-291/00), Paragraphs 50 to 54);
• The goods covered by the marks were identical or similar; and
• There was a risk of confusion among consumers, which included a risk of association.

Based on the arguments brought before it, OSIM issued a final decision in favour of Sky Capital. Registration of the national trademark OPPO was rejected for all the goods applied for.

OSIM followed OHIM’s practice and ruled that the marks were identical, taking the view that the mark applied for reproduced (without any additions) all the constitutive elements of the previous mark and that, when seen as a whole, the differences were so small that they were negligible.

Sky Capital's argument was thus taken into account, even though OSIM’s decision does not exactly contain this wording. OSIM’s argument was that the two trademarks were identical from a phonetic and semantic point of view.

OSIM also considered that the goods covered by the marks were identical, as the goods designated in the application were included in the list of goods covered by the earlier registered mark. Further, OSIM stated that the goods had the same nature and the same mode of use.

Arguably, the decision of OSIM is of importance, not only for Sky Capital, but also as a precedent. It is expected that OSIM will take this decision into account in future similar cases.

Andra Musatescu, Andra Musatescu Law & Industrial Property Offices, Bucharest

Andra Musatescu Law & Industrial Property Offices represented Sky Capital in this case