Zorro and friends cut local trademark applicants down to size

The Examination Committee of the Romanian State Office for Inventions and Trademarks (SOIT) has issued a series of decisions in favour of international mark owners against local companies' applications to register device marks.

In Zorro Productions Inc v SC Parc Industries SRL (Case 1006651/2004, October 5 2004), the SOIT upheld the opposition by US-based company Zorro Productions Inc to the registration by SC Parc Industries SRL of the word and device mark ZORRO in Class 34 of the Nice Classification.

Zorro, which controls the worldwide trademarks and copyrights in the name, visual likeness and character of Zorro, opposed Parc's application on the basis of its copyrights and various international trademark registrations, including two figurative marks, for goods in Classes 9, 14, 15, 16, 25, 28, 30 and 31.

The SOIT refused to recognize the well-known character of Zorro's marks as Zorro had failed to file evidence establishing:

• the duration and scope of use of its marks in Romania with respect to the goods and services protected;
  
  
• the duration and scope of publicity given to its marks in Romania;
  
  
• the geographical area of use of its marks in Romania and in neighbouring countries; and
  
  
• the degree of recognition of the marks on the Romanian market by the relevant section of consumers (by means of a market survey).

It also held that there was no risk of confusion because the goods to which the respective marks apply were different.

However, the SOIT upheld Zorro's argument that there was a risk that consumers would associate Park's mark with the image and name of the Zorro character in which Zorro has rights. Accordingly, it upheld the opposition.

In another case decided on the same day, the SOIT upheld an opposition by multinational sportswear manufacturer Puma AG Rudolf Dassler Sport (Case 1008845/2004).

SC Far East Group SRL had applied to register the word and device mark FAR EAST CROSS in Class 25 for "clothing, footwear and articles for head covering" and Class 35 for "advertising and commercialization of clothing, footwear, articles for head covering".

Puma opposed the application on the basis of six prior international figurative mark registrations for goods in Classes 18, 25 and 28.

The SOIT upheld Puma's argument that the predominant element of Far East's trademark application was very similar to Puma's third figurative mark. It also found that the products to which the Puma and Far East marks apply were identical. The SOIT concluded that there was a risk that consumers would associate the two parties' marks. Accordingly, it upheld Puma's opposition.

In a third case decided that day, multinational plastics and chemicals manufacturer BASF Coatings AG successfully opposed the application by SC Paintstar SRL to register the word 'star' and a left-hand facing parrot design as a trademark in Classes 2 and 17 (Case 1004466/2004).

BASF opposed the application on the basis of three prior international registrations for figurative marks depicting a left-hand facing parrot for a wide range of goods, including those in Classes 2 and 17.

The SOIT dismissed Paintstar's argument that (i) the predominant element of its trademark was the word 'star', and (ii) the parrot was only depicted to suggest that the products were available on the Romanian market in a variety of colours. The SOIT found that (i) the predominant element of Paintstar's trademark was similar to two of BASF's senior marks, and (ii) the products to which the marks at issue apply were identical. Accordingly, the SOIT upheld BASF's opposition.

All three decisions may yet be appealed to the SOIT Re-Examination Committee.

Alexandru Harsany, Nestor Nestor Diculescu Kingston Petersen, Bucharest