OMV Aktiengesellschaft, Austria filed an opposition against the registration of trade mark application № 132028 DMV, for the goods and services in classes 4 and 39. Proprietor of the processed trade mark is G S Commerce Ltd., represented by the team of IP Consulting.
The opponent based the opposition on earlier combined European uninion trade mark № 221598 OMV, registered for the goods and services in classes 1, 2, 3, 4, 6, 7, 11. 17, 19, 36, 37, 39, 40 and 42.
According to the opponent, the distinctive and dominant element in the trade mark applied for, is the word element DMV. In the earlier trade mark, the opponent considers that the distinctiveness is borne accordingly by the letter combination OMV. Also, the company considers that the different colour layout and the flag do not contribute to a different impression of the trade marks. Similarly, the opponent finds the signs to be phonetically similar because they have the same length and intonation. He claims that the goods and services of the compared trade marks are identical and similar.
Given the above, the opponent believes that there is a likelihood of confusion.
The opponent also claims that the earlier trade mark has high distinctiveness and prominence as of March / April 2013.
By decision on 06.01.2017 a complete refusal of the registration of the trade mark with entry No. 132028 DMV was issued for the goods and services for which it was applied for.
IP Consulting filed an apeal against the decision for refusal of trade mark registration.
Regarding the existence of genuine use of the earlier European Union trade mark No 221598 IP Consulting pints out that the entity using the earlier trade mark does not match its proprietor. According to the applicant, the users of the trade mark are separate companies. The only relation between them is the common source of capital and concluded contracts for the provision of services.
In terms of likelihood of confusion, IP Consulting considers that they need not be analyzed.
Тhe applicant also states that there are no dominent elements in the trade mark applied for, because it is regarded as a combination of verbal and figurative indications. In case of short words, the slightest difference becomes clearly noticeable, which itself is enough to accept a lack of similarity.
As other evidence of lack of likelihood of confusion, the applicant represented by IP Consulting pints out the different sound at the beginning of the signs (D and O), as well as dissimilar visual impact regarding the first characters, graphics and colour.
Taking into account the facts and the legal point of view, the President of the Patent Office of Republic of Bulgaria considers that the appeal against the decision for a complete refusal to register the DMV combined trade mark is well founded. Therefore, the appealed decision should be annulled.