Serbian chips producer victorious in opposition against Macedonian competitor

Marbo Product, a Serbian producer of chips and baked products active in the Balkan region, holds many trademark registrations consisting of the common word element 'CHiPSY' in Classes 29 and 30 of the Nice Classification (staple foods).

On May 31 2012 it filed an opposition with the Bulgarian Patent and Trademark Office (PTO) against the registration of the word mark CHIPS’Y KING (International Registration 1082927) in Class 29 (meats and processed foods), owned by Macedonian chips producer MDZ ROBIN.

On February 7 2013 the Bulgarian PTO, pursuant to Article 38, Paragraph 10 of the Bulgarian Law on Marks and Geographical Indications, refused to register the CHIPS’Y KING mark in Bulgaria for all goods applied for in Class 29. The PTO ruled that the similarity of the goods and the trademarks gave rise to a likelihood of confusion among the relevant public, including a likelihood of association with the opponent’s earlier marks.

In particular, the PTO ruled that the contested trademark and the earlier marks were visually similar - that is,  they created a similar overall visual impression because 'CHiPSY' and the first word of the opposed mark were similar to a high degree.

Further, the board noted that the marks at issue covered goods in Classes 29 and 30, for which the attention of the relevant consumers is relatively low, since they do not make a preliminary search before buying such goods. The board also found that the opponent owns a family of marks containing the common distinctive component 'CHiPSY'. When there is a family of marks, the common component acquires a high degree of distinctiveness due to its repeated appearance in the marks of the family.

Therefore, the PTO concluded that consumers may be misled as to the source of goods bearing the mark CHIPS’Y, and may be led to believe that goods bearing the marks originate from the same undertaking or from economically linked undertakings.

The decision can be appealed to the PTO’s Opposition Division, pursuant to Article 42, Paragraph 1, Item 3 of the law, within three months of the notification thereof.

Valeri Penev, PETOŠEVIC, Sofia

PETOŠEVIĆ Bulgaria represented Marbo Product in this case