Hard Rock Café victorious in opposition proceedings

The Bulgarian Patent Office (BPO) has ruled in favour of Hard Rock Holdings Limited, the owner of the globally known HARD ROCK CAFÉ marks, in the opposition proceedings against a Bulgarian company, City Novel, which sought to register the trademark CITY ROCK CAFÉ.

On December 17 2012 the BPO issued a decision refusing to register the CITY ROCK CAFÉ mark in its entirety, meaning that the Bulgarian company, based in Veliko Tarnovo (a city in north central Bulgaria), cannot register the trademark in Classes 41 and 43 of the Nice Classification.

The grounds for refusal were as follows:

• The opponent’s six earlier registered trademarks, which contain the word element 'Hard Rock Café', are inherently distinctive.
• There was a visual, phonetic and conceptual similarity between the trademark application and the earlier marks. This similarity determined the overall similar impression created by the mark applied for among the relevant part of the public. The services in Classes 41 and 43 covered by the parties' marks are identical and/or similar, which gave rise to a likelihood of confusion among the relevant public.
• The opponent owns a family of marks that include the common distinctive component 'Hard Rock Café'. Considering the similarity between the trademark application and the family of earlier marks, there was a strong likelihood of confusion, as consumers were likely to:
  • be misled about the origin of the services bearing the mark CITY ROCK CAFÉ; and
  • wrongly believe that the mark is part of the opponent’s family of marks, or that the services come from the same undertaking or from economically linked undertakings.

In light of the above-mentioned findings, the BPO, pursuant to Article 38(10) of the Bulgarian Law on Marks and Geographical Indications, refused to register the application for CITY ROCK CAFÉ (No 118150).

The decision can be appealed to the BPO’s Opposition Division pursuant to Article 42(1)(3) of the law within three months of the date of notification of the decision.

Valeri Penev, PETOŠEVIC, Sofia

PETOSEVIC Bulgaria represented Hard Rock Holdings Limited in this case