Luxury hotel chain successfully prevents registration of TRIDENT

Oberoi Hotels Pvt Ltd, a well-known global luxury hotel chain, has obtained a positive decision from the Romanian Trademark Office (OSIM) (November 11 2014).

A Romanian individual applied for the registration of the trademark TRIDENT for:

• "vehicles; apparatus for locomotion by land, air or water" in Class 12;
• "business management and administration by retail stores; advertising" in Class 35;
• "education services for persons and animal training; services whose essential purpose is entertainment, amusement or recreation, including entertainment and sports activities, both individual and collective (body-building); training, other sports or cultural activities" in Class 41; and
• "public administration, restaurants and temporary accommodation" in Class 43 of the Nice Classification.

Oberoi Hotels filed an opposition against the application based on its Community trademark TRIDENT (No 007515521), registered for "hotel services; restaurant services; reservation services and accommodation at hotels; accommodation services" in Class 43 and "beauty salons" in Class 44. Trident Hotels are five-star hotels that have established a reputation for excellence and are recognised for offering quality and value.

Oberoi Hotels' arguments were as follows:

• The trademarks were identical from a visual, phonetic and conceptual point of view, and covered similar services and related products; and
• There was a risk of confusion, which included a risk of association among consumers.

Based on the arguments brought before it, OSIM issued a final decision in favour of Oberoi Hotels. The national trademark TRIDENT was refused registration for "services whose essential purpose is entertainment, amusement or recreation, including entertainment and sports activities, both individual and collective (body-building); training, other sports or cultural activities" in Class 41 and "public administration, restaurants and temporary accommodation" in Class 43.

Arguably, OSIM's decision is well-grounded and important, not only for Oberoi Hotels, but also as a precedent. In this respect, 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 Oberoi Hotels in this case