In October 2011, Marbo Product, Serbian producer and distributor
of chips and baked products, active in the Balkan region and holder
of many trademark registrations consisting of the common verbal
element 'CHiPSY', filed an opposition at the Albanian PTO
against the international application for registration of the
CHIPS'Y KING, word mark only, in IC 29 (potato chips).
Marbo Product based the opposition on its previous international
registrations (IR) designated in Albania, namely IR 1041331 -
CHiPSY word and device mark, IR 923684 - CHiPSY Paprika word and
device mark, IR 929513 - CHiPSY Chili word and device mark and IR
929514 - CHiPSY Cheddar word and device mark, all registered inter
alia in IC 29.
The opponent claimed the likelihood of confusion would
inevitably occur due to the similarities between the marks, used
for identical goods, as well as the consumers' low level of
attention. The opponent also proved the use of its marks.
The applicant, the Macedonian chips producer DPTTGU "MDZ
ROBIN" replied to the opposition, arguing that the
co-existence of the disputed marks would not cause the likelihood
The Albanian PTO Appeal Board found the marks confusingly
similar and decided in favor of the opponent. The decision has
become final because the applicant did not appeal within the
prescribed period of time.
During these particular opposition proceedings, the Appeal Board
made some interesting rulings regarding the issue of estimating the
distinctive character of a mark. Namely, the Appeal Board put
emphasis on the importance of identifying the distinctive character
of the marks in question, stating that this factor is important
when estimating the likelihood of confusion. This is in line with
the EU criteria and it can be regarded as a step forward in the
Albanian practice, because the Appeal Board previously did not pay
specific attention to this factor.
The Appeal Board also focused on the issue of determining the
distinctive character of the marks consisting of foreign language
words. The Appeal Board stated that words could have a specific
meaning in a foreign language, but that this does not automatically
mean that they convey such meaning to the Albanian consumers. The
Board thus rejected the applicant's argument that the word
'CHiPSY' lacks distinctiveness because it derives from the
English word 'chips'.
Additionally, this authority made a clear division between words
that have become familiar to the Albanians and those that have not,
ruling that words either entered into the Albanian dictionary or
broadly accepted as such by various studies, or by documents alike,
are regarded as words that have become familiar to the Albanian
consumers. It is another remarkable step, considering that prior to
this case the Appeal Board treated every mark consisting of words
in English and Italian as descriptive, without paying attention to
whether the words have become familiar or not.
The Appeal Board further established that one of the factors
that should be taken into consideration while estimating the
distinctive character is the mark's use, ruling that a mark can
acquire distinctive character through its use and promotion. After
examining the evidence on the use and promotion of the CHiPSY mark
highlighted by the opponent, the Appeal Board estimated that the
verbal element CHiPSY enjoys enhanced distinctive character even
for this reason, the extensive presence of the CHiPSY brand on the
The Appeal Board's reasoning seems to be in line with the
criteria established by the EU authorities. However, it remains to
be seen if the Albanian practice will follow this decision in the
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