Global energy company victorious in opposition against local competitor
The Appeal Board of the Albanian Patent and Trademark Office has ruled in favour of Repsol SA, an integrated global energy company based in Madrid, Spain, in a trademark opposition case against Turkish energy company Reksoil Petrokimya Sanayi Ve Ticaret Anonim Şirketi.
Reksoil had applied for the registration of the international trademark REXOIL (word and device) (International Registration No 1171174):
Repsol based the opposition on its earlier international registrations for REPSOL (word and device) (International Registrations Nos 982529 and 1146022) designating Albania, both registered in Class 4 of the Nice Classification, among others.
The Turkish company applied to register the REXOIL mark in Class 4. Repsol filed an opposition on the ground that the similarities between the marks in dispute would inevitably cause a likelihood of confusion.
To prove that there was a likelihood of confusion, the opponent provided the Appeal Board with comprehensive arguments, emphasizing the phonetic and visual similarities of the marks as well as the identity of the goods. The opponent relied on various rulings by the EU authorities, and urged the Appeal Board to consider these rulings when analysing this particular case, stressing that the Albanian legislation has fully transposed the First Trademarks Directive (89/104/EEC).
In response, the applicant argued that the co-existence of the marks would not cause any likelihood of confusion.
The Appeal Board decided in favour of the opponent, finding that the disputed marks covered identical goods and that there was a considerable degree of visual and phonetic similarity.
According to the Board of Appeal, taking into account that, in the majority of cases, consumers do not see the two brands side-by-side, it should be assumed that the brand most recently seen by consumers must contrast with (the more or less faded recollection of) the first brand – in this particular case, the marks were sufficiently similar to establish a likelihood of confusion.
The decision is not yet final, as the time limit to appeal has not elapsed.
Irma Cami, PETOŠEVIĆ, Tirana
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