International charity prevents registration of figurative sign containing its mark
Alpha International, an international charity that offers guidance and assistance in the areas of religion and relationships and provides the well-known Alpha Course, has obtained a positive decision in Romania.
A Romanian company filed an application for the registration of the figurative trademark ALPHA CLINICS with the Romanian State Office for Inventions and Trademarks for, among other things, "education; provision of training; entertainment; sporting and cultural activities" in Class 41 of the Nice Classification:
Alpha International is the owner of the Community word mark ALPHA (Registration No 2769016) and the international trademark ALPHA (and logo) (Registration No 793510) designating Romania, both of which cover Class 41.
Alpha International considered that ALPHA CLINICS was so similar to its trademarks as to create confusion among consumers and that its prior trademark rights would be infringed by such an application. Therefore, it decided to file an opposition against the registration of the ALPHA CLINICS mark for services in Class 41.
Alpha International’s arguments in the opposition procedure included, but were not limited to:
- the similarity of the trademarks under comparison;
- the higher level of distinctiveness of its international and Community trademarks, which had been acquired through use;
- the fact that the addition of ‘clinics’ was not capable of differentiating the trademarks;
- the similarity of the services in Class 41; and
- the risk of confusion and association.
In Judgment 7367 of January 22 2015, which was drafted and summoned to Alpha International on February 5 2015, the State Office for Inventions and Trademarks decided to reject the application for registration of ALPHA CLINICS for all the services in Class 41, based on the view of the Opposition Commission according to which:
- the parties' trademarks were similar as they have the same dominant and principal element (namely, 'alpha'), which is placed at the beginning of the marks;
- the services covered by the parties' trademarks were similar; and
- there was a risk of confusion among the public, which included a risk of association.
Arguably, the decision is of high importance, not only for Alpha International as there is now no risk that its ALPHA trademarks will be diluted, but also as a precedent to be followed in similar cases.
The decision of the Romanian State Office for Inventions and Trademarks is not yet final.
Andra Musatescu, Andra Musatescu Law & Industrial Property Offices, Bucharest
Andra Musatescu Law & Industrial Property Offices acted for Alpha International in this case
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