Romania: Smokers pay more attention to brands

In a decision rendered by the Romanian Trademark Office (TMO) in November 2015 (communicated to the parties in March 2016), the examiners found that there is no likelihood of confusion between Mark Adams No 1 and Mark 10.

Thus, in the appeal case GRE Grand River Enterprises Deutschland GmnH v Philip Morris Brands SARL, the TMO decided there is no likelihood of confusion between the earlier mark invoked by the appellant – EUTM Mark Adams No 1 (number 009148628), and the subsequent sign applied for protection, represented by the word mark Mark 10 (IR number 1201182).

The contested sign was applied for protection as an IR designating Romania by Philip Morris Brands Sarl, for goods in class 34, including tobacco, smokers' articles, cigarettes and electronic smoking devices.

In its decision, the Appeals Committee noted that the word signs in conflict are different in length and structure, both because of the different number of words and the numerical elements included.

Even if the signs feature an identical verbal element in their beginning – "Mark" – the examiners considered this element to render only a low degree of aural similarity, which would not be sufficient for confirming the likelihood of confusion on the part of the public. According to the examiners, although the identical verbal element "Mark" present in the construction of both signs could generate a certain degree of similarity from a conceptual standpoint, the fact that it is followed by the word Adams in the earlier mark strongly differentiates the signs – given that the construction Mark Adams No 1 could suggest the fact that Mark Adams brand of cigarettes is number 1.

In connection with the relevant public notion, the Committee considered that the analysed goods in class 34 designated by the trade marks in conflict, namely tobacco products, cigarettes, smokers' articles, are addressed to adult smokers, which, similar to coffee drinkers, are more attentive when purchasing such goods.

Consequently, the Committee noted in its decision that the trade marks in conflict are overall different enough to exclude any likelihood of confusion, if they designate identical goods in class 34. In this case, the likelihood of association was also considered excluded by the Committee.

This decision aligns the practice of the Romanian TMO to the EU case law analysing conflicts related to trade marks designating goods in class 34, which established that, although tobacco products are relatively cheap fast moving consumer goods, smokers represent an exception when it comes to the attention they pay to the preferred tobacco/cigarettes brands. In such cases, a higher degree of similarity of signs would be necessary in order to establish whether the relevant public risks confusing them.

The decision rendered by the Appeals Committee can be further contested by the appellant with the Bucharest Court within 30 days from the communication date.

Andreea Bende

Nestor Nestor Diculescu Kingston Petersen Bucuresti-Ploiesti 1A, Sector 1Bucharest 013681, Romania+40 21 201 1200office@nndkp.ro www.nndkp.ro

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