Romania: Likelihood of confusion over Pro and Sport

October 28 2015

In a decision of the Romanian State Office for Inventions and Trademarks (SOIT) in July 2015, the examiners found that, in the opposition case Pro TV v Adrian Sarbu, there is likelihood of confusion between the earlier trade marks invoked by the opponent, oriented around the particle(s) "Pro"and "Sport", and the subsequent sign applied for (depicted in figure 1).

Figure 1

The contested sign (national filing M 2014 05912) was applied for in Romania by Adrian Sarbu for goods and services in classes 16 (paper, cardboard and goods made out of these materials, not included in other classes; printed matter; newspapers, magazines, publications), 35 (advertising), 38 (telecommunications, services relating to forums and discussions on the internet; broadcasting of TV and radio shows; distribution of newspapers, magazines and online publications), 41 (education, entertainment, cultural activities, events) and 42 (creating and maintaining a web site and a Facebook page).

The opponent, Pro TV , invoked, among other things, the rights deriving from its national figurative trade mark registered in Romania (figure 2). This registration (099462) granted protection since 2009 for identical goods and services as those for which the contested application was filed in classes 16, 35, 38 and 41. In addition, the opponent also invoked the rights deriving from various other trade marks protected in Romania for goods and services in the above classes, including either the particle "Pro" or the word "Sport" (including figurative mark Sport.ro, (national registration 109453), figurative mark Sport.ro HD (national registration 110200), figurative trade mark Sport.ro (national registration 084743) and figurative trade mark Pro TV (national registration 099840).

Figure 2

In their decision, SOIT's examiners noted that all the verbal elements of the mark applied for are also included in the earlier marks invoked, while in the case of figurative trade marks including both word elements and devices, a greater importance is placed on their verbal elements, which are likely to be remembered by consumers.

The examiners further noted that by adding the Pro particle, both at the beginning and at the end of the sign applied for, the likelihood of the public's confusion is further emphasised and so is the likelihood of association of the trade marks in conflict. In fact, during the opposition procedure, the applicant submitted a request by which he intended to disclaim the verbal element Pro in the mark, but the request was rejected by SOIT.

Last but not least, the examiners noted that the compared trade marks are highly similar as well from a conceptual standpoint, as they send the same message to consumers and there is a likelihood of confusion in the present case, also caused by the identity of the goods and services in discussion.

In our view, the examiners' conclusion is based on the fact that the denomination Pro is not only the central verbal element of some of the earlier marks invoked in the opposition, but it also identifies with the opponent's trade name, the same with that of Pro TV television network, highly popular in Romania.

Although the well-known character of the earlier Pro TV and Sport.ro trade marks and the reputation of Pro TV were not retained by the opposition division, the decision rendered in this case is important, as it shows SOIT's practice in comparing signs that include the same verbal elements (not necessary on the same position) adjoined by different devices or typefaces.

Moreover, this decision might create an important precedent for the likelihood of enforcing rights deriving from the registration of earlier marks which do not include highly distinctive verbal elements (that is, Pro / Sport) but which acquired this character through extensive use on the market (and this is enough not to be questioned in practice when invoked before SOIT). The fact that the differences between the marks were not sufficient to counteract their similarities supports the above conclusion.

The decision rendered by SOIT is final as it was not further contested by the applicant.