ROIT's decision in opposition proceedings could set precedent

On April 21 2011 the Romanian Office for Inventions and Trademarks (ROIT) rendered a decision within the context of opposition proceedings filed by Go Fast Sports & Beverage Company against an application to extend protection to Romania of the international trademark GO FAST SPORTS ENERGY DRINK, registered in the name of Dr Martin W Duppenthaler of Switzerland (International Registration 967609, dated September 5 2008). The ROIT refused to register the mark for all goods in Classes 25 and 32 and all services in Class 35 of the Nice Classification.

The opposition was based on a likelihood of confusion with the opponent’s prior rights, namely its Community trademark (CTM) registrations for the word mark GO FAST (CTM 003060258, registered on January 17 2005 for goods in Classes 25 and 28; CTM 002267029, registered on November 8 2002 for goods in Class 32).

The opponent argued that:

• the trademarks in question were highly similar; and
• there was a direct conflict between the goods and services covered by the international trademark on the one hand, and the goods in Class 25 covered by CTM 003060258 and those in Class 32 covered by CTM 002267029 on the other hand.

The ROIT concluded that there was a likelihood of confusion with respect to the goods in Classes 25 and 32.

The opponent also argued that, because Class 35 covers, among other things, general retail services and the manufacture of goods intended to be put on the market, the services in Class 35 covered by the opposed trademark were closely connected to the goods in Classes 25 and 32 covered by the earlier marks. Consequently, the opponent argued, there was also a likelihood of confusion with regard to the Class 35 services, and the extension of International Registration 967609 should also be rejected for these services.

The ROIT agreed with the opponent’s arguments and held that the services in Class 35 were closely connected with the goods in Classes 25 and 32 covered by the earlier marks. The ROIT thus rejected the application in its entirety. Specifically, the ROIT stated that:

“because the goods in Classes 25 and 32 are similar, and because the services in Class 35 are complementary to the list of goods for which the earlier trademarks were registered, there is a likelihood of confusion.”

This decision constitutes valuable case law, as it provides a precedent with respect to complementary services as they may relate to Class 35. The decision could be used in future disputes involving trademarks covering only goods on the one hand, and trademarks covering goods and complementary services in Class 35 on the other.

Aura Campeanu, PETOŠEVIĆ, Bucharest