US company fishes out victory in annulment action

US company Pure Fishing Inc, the owner of world-wide known fishing tackle brands, has obtained a positive decision in an annulment action brought against local company SC CHEN YANG 2000 SRL.  

The Romanian company had registered with the Romanian Trademark Office the figurative mark SPIDER YOYO for "sport and fishing articles, fishing rods, fishing reels, fishing lines, hooks and artificial baits" in Class 28 of the Nice Classification:

Pure Fishing is the owner of the following trademarks:

• The international word mark SPIDER (833738), which designates Romania, and is registered for “fishing rods; fishing reels; fishing lines; artificial baits for fishing; terminal fishing tackle; and fishing accessories, namely, fishing floats, bobbers, fishing hooks, hand-held fishing dip nets, hand-held fishing landing nets, hand-held bait capture nets, in ground and mounted fishing rod holders, fishing hook removers, fish stringers, fish strike indicators, and fishing tackle boxes” in Class 28.
• The Community word mark SPIDER (005142070), registered for “fishing rods; reels for fishing; gut for fishing; artificial baits for fishing; fishing tackle and fishing equipment; fishing accessories, namely floats, bobbers, fish hooks, weights for fishing in the form of balls and lead; portable fishing nets, portable landing nets, portable bait traps (nets), rod rests, fish hook removers, fish stringers, bite indicators, scales (weighing devices) for fish, fishing buoys and fishing cases” in Class 28.

Pure Fishing considered that the registered mark SPIDER YOYO so resembled its marks as to be likely to create confusion among consumers. Pure Fishing believed that its prior trademark rights were being infringed by the SPIDER YOYO mark and, therefore, decided to file an annulment action.

Pure Fishing’s arguments in court were extensive - they included, but were not limited, to:

• the similarity of the trademarks at issue;
• the higher level of distinctiveness of its international registration and Community trademark, which had been acquired through use;
• the fact that consumers usually pay more attention to the beginning of a trademark; therefore, the addition of ‘yoyo’ was not of a nature to differentiate the marks;
• the identity of the products for which the marks were registered; and
• the risk of confusion and association.

In judgment 1939/2012, the High Court of Bucharest decided as follows:

• The trademarks were confusingly similar, as the principal element of all the marks was ‘spider’. The element ‘yoyo’ and the figurative elements (ie, the way the words were written and the drawing representing the ripples caused by an object falling in water) were not of a nature to differentiate the marks.
• The products were identical.
• There was a clear risk of association, as there was a possibility that consumers might consider that there was a link between the earlier trademarks and the contested mark.

The decision of the court is important, not only for Pure Fishing (as there is no longer a risk of dilution of its SPIDER marks), but also as a precedent to be followed by the courts in similar cases.

The decision of the High Court of Bucharest is not yet final.

Andra Musatescu, Andra Musatescu Law & Industrial Property Offices, Bucharest

Andra Musatescu Law & Industrial Property Offices acted for Pure Fishing in this case