US fishing company obtains positive decision against Hungarian competitor

US company Pure Fishing Inc, a leading global provider of fishing tackle, lures, rods and reels marketed under well-known trademarks, has recently obtained another positive decision in Romania.

A Hungarian company filed an application with the Romanian State Office for Inventions and Trademarks for the registration of the figurative trademark BLACK SPIDER for products in Class 28 (“fishing tackles, fishing rods, fishing reels, gout, bait, fishing sensors, fishing alarms, bobbers, fishing hooks, barbs and other fishing equipment”) and services in Class 35 (“advertising; business management; commercial administration; office affairs”) of the Nice Classification.

Pure Fishing is the owner of the following trademarks:

• the international word mark SPIDER (No 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; and
• the Community word mark SPIDER (No 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 BLACK SPIDER mark was so similar to its own mark as to create confusion among consumers and that its prior trademark rights would be infringed by the registration of the mark. Therefore, it decided to file an opposition.

Pure Fishing’s arguments in the opposition procedure included, but were not limited, to:

• the similarity of the trademarks;
• the higher level of distinctiveness of the international and Community trademarks, which had been acquired through use;
• the addition of the word 'black' was not capable of differentiating the trademarks;
• the identity and similarity of the products covered by the marks; and 
• the risk of confusion and association.

In Judgment 428 of February 11 2015, which was drafted and summoned on February 13 2015, the State Office for Inventions and Trademarks decided to reject the application for the registration of the BLACK SPIDER trademark, based on the view of the Opposition Commission according to which:

• there was a high degree of visual and conceptual similarity between the BLACK SPIDER and SPIDER marks; and
• the products were similar, and the services were related to the products for which the SPIDER marks are registered.

The decision is arguably of high importance, not only for Pure Fishing as there is now no risk that its SPIDER marks will be diluted, but also as a precedent to be followed in similar cases.

The decision of the 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 Pure Fishing in this case