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 of confusion.
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 Albanian market.
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 future.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.